Can you trademark the look of a shoe? VANS v. TARGET

A trademark is a word, phrase, symbol, or design that identifies and distinguishes the source of the products of one company from the products of other companies. The purpose of trademark law is to protect consumers from being tricked into buying products of an inferior quality. Trademark law grants a trademark owner the right to prevent others from branding products with their trademark in a way will will confuse consumers. If someone other than the trademark owner brands products in a way which confuses consumers, that can be considered trademark infringement. A trademark owner can file a lawsuit to combat trademark infringement. A trademark owner can request a court grant in injunction to stop trademark infringement and can recover monetary damages for trademark infringement which has occurred.

Apparel manufacturers are extremely protective of their products and designs. When a piece of apparel sells well competitors quickly try to copy the design before consumers move onto the next trend. Because apparel has is intrinsically functional, it is worn to protect a person from the environment, copyright protection is not available. And apparel is rarely inventive enough to qualify for patent protection. For this reason apparel manufacturers frequently rely on trademark protection. Apparel manufacturers can reuse certain designs until the design becomes distinctive enough to qualify for trademark protection. This enables an apparel manufacturer to protect its products from counterfeiting.

However, trademark infringement is defined by consumer confusion. If consumers are sophisticated enough to tell the difference between products manufactured by a trademark owner and copy cat products, that weakens a trademark infringement case. Even if copy cat products have design elements very similar to a trademark, it is difficult to win a trademark case if consumers know it is a copycat product.

A case which deals with this issue is VANS, INC. v. TARGET CORP., 8:18-cv-02258 (C.D.CA 2018). Vans is an apparel manufacturer that focuses on shoes for skateboarders. Vans has a trademark on a distinctive stripe design which is incorporated into its shoes. Target is a major retailer in the United States. Target recently released a product line of shoes which also have a stripe along the side. The two different shoe designs are shown in the picture above. The designs are similar but, not identical. Vans sued Target for trademark infringement, claiming that there is a likelihood of consumer confusion between the shoes produced by Vans and the shoes sold by Target.

What makes the case complicated is the consumer reviews that Vans included in its complaint. Vans reproduced two consumer reviews that both refer to Target’s products as fake Vans. While these comments may be infuriating to Vans, that people bought Target’s shoes because Target’s shoes look like Vans shoes, the comments actually work against Vans. The consumer reviews demonstrate that consumers know they are not purchasing products manufactured by Vans, therefore there is no consumer confusion.

The complaint was recently filed and Target has not responded yet, but if Vans wants to be successful they will need to produce evidence of consumer confusion.

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