By Talia Loucks
Remember when Skechers shoes were cool in the 90s? Well, now that the Spice Girls era of chunky platforms are no longer in style, and people opt for more conventional shoes, the modern shoe market has forced Skechers to expand into other shoe types. Unfortunately for Skechers, this expansion has resulted in trademark infringement claims against it, especially from Adidas.
This past September, Adidas filed a trademark infringement lawsuit against Skechers in federal court for the District of Oregon. And, on February 12, 2016, Adidas had its first victory when Judge Marco A. Hernandez issued a preliminary injunction against Skechers, prohibiting it from selling its Onix, Relaxed Fit Cross Court TR, and women’s Supernova shoes as they are “confusingly similar” to three Adidas designs.
The Onix, which is pictured above on the left, is an alleged infringement of Adidas’ popular Stan Smith shoe, pictured on the right. While three designs were at issue in the case, a large part of the injunction speaks of the Stan Smith design. The shoe is so popular, the injunction points out, it “even got a shout-out from hip-hop mogul Jay-Z on his album The Blueprint…” and many celebrities, including John Lennon, David Bowie, Pharrell, Gwen Stefani, Marc Jacobs, have publicly worn it. Adidas alleges that Skechers has been selling footwear “in a blatant, bad faith attempt to trade on Adidas’ goodwill and to profit wrongfully from consumer confusion.” Judge Hernandez appears to agree.
Similarly, Adidas alleges that Skechers’ Supernova infringes upon an Adidas shoe that goes by the same name. As for the third shoe design, Sketcher’s Fit Cross Court TR, Adidas alleges this shoe infringes on the Adidas’ three-stripe symbol, which Adidas has used since the 1950s. The preliminary injunction cites to six previous disputes between Adidas and Skechers regarding Skechers’ use of the three-stripe mark. Skechers settled these disputes and agreed to stop selling the challenged footwear, the most recent settlement occurring in April 2013. In all of these settlements, the peace “sometimes lasted a few years, but sometimes only months…” until Skechers produced another three-stripe marked shoe
The focus in any trademark lawsuit, of course, is whether consumers are confused. So, if consumers believe Skechers’ Onix shoe could have come from Adidas, then an infringement claim is likely to be successful. Since the preliminary injunction Adidas requested was granted, it seems the likelihood of continued success is high. When looking at the Stan Smith shoe, Judge Hernandez said that even he could not tell the difference: “Although Skechers points out minor differences between its Onix shoe and the Stan Smith… the unmistakable overall impression is nearly two identical shoes.” He went on to say that Adidas “made a strong showing that it is likely to succeed in proving that Skechers is using marks that are confusingly similar or even identical to Adidas’ marks.” Judge Hernandez found that a preliminary injunction, though an extraordinary remedy, is in the public interest because of the likelihood of confusion amongst consumers.
The preliminary injunction requires that Skechers not manufacture, distribute, advertise, sell, or offer for sale any footwear that is “confusingly similar” to the Stan Smith shoe or the Adidas’ three-stripe mark, or any shoe under the Adidas’ “Supernova” mark. Skechers plans to appeal. But, as the number-two shoe company in the U.S. with a successful business model that is reliant upon the sale of many different shoe designs, a prohibition from selling three styles is unlikely to harm Skechers’ dominant market position.
So, even though the chunky Skechers of days past are no longer popular, the resilient company is thriving in a time when many shoe companies are struggling. Whether an appeal is successful or not, the preliminary injunction on its own is unlikely to harm Skechers overall sales. However, attempting to free-ride on other companies’ goodwill will only result in more legal woes for Skechers.
All images from: Preliminary Injunction.