What should I do if someone threatens me with a trademark infringement lawsuit? Sketchers v. Adidas

A trademark is something that a manufacturer brands their products with to tell consumers who created the product. Traditionally, a trademark is though of as a word phrase or symbol, but anything that is used to identify the source of a product can be granted trademark protection. The key thing that defines a trademark is the association that consumers make between the trademark and the producer of the products branded with the trademark. If someone other than the trademark owner brands products with a trademark in a way that causes consumers to be confused about who produced a product, that can be considered trademark infringement. A trademark owner can combat trademark infringement by filing a lawsuit for an injunction to stop trademark infringement, and to get monetary damages for trademark infringement which has happened.

In the United States trademark law is relatively inclusive, meaning that if a trademark owner can demonstrate that something qualifies as a trademark that thing can be protected as a trademark. This rewards companies that claim attempt to claim as much as possible. The practice of pushing trademark law to its limit, to try to claim as much as possible, is frequently practiced in the fashion industry. The fashion industry is fiercely competitive, a constant race to come up with something new that resonates with consumers. Because fashion is considered functional, it cannot be protected by copyright law; and because fashion is typically the re-imagination of an old idea it not inventive enough be patented. Therefore the fashion industry tries to claim that an aspect of a design is a trademark, to prevent competitors from copying successful designs. While this tactic can work well when dealing with manufactures that are only interested in counterfeiting goods, when two legitimate manufacturers in the fashion industry start claiming designs as trademarks it can result in lengthy and costly litigation.

Threatening a competitor with litigation can be advantageous, if there is a strong case to be made. But threatening litigation with a weak case can leave you with two sets of attorneys bills.

SKECHERS USA, INC. v. ADIDAS AG, 19-cv-00812 (C.D.CA 2019) is an example of a case where a company threatened with trademark infringement went on the attack. The parties in this case are two shoe manufacturers. Skechers released a style of shoes in 2018 called the Goldie – Peaks Shoe, which remains offered for sale today. Goldie – Peaks Shoe features ornamentation including a solid side panel consisting of four contiguous segments, each of which is a different, highly contrasting color and has a different, highly contrasting surface treatment; a row of decorative, metallic pyramid studs; and a two-tone, textured, metallic heel patch. Adidas has several registered trademarks for three stripes on the side of footwear. In 2018 Adidas sent Skechers several letters claiming that Skecher’s Goldie shoe design infringes and dilutes Adidas’s trademarks and asserted that the overall commercial impression would lead to consumer confusion as to who manufactured the Goldie shoe. Adidas also demanded that Skecher’s send sales data so Adidas could formulate an appropriate monetary demand.

Skecher’s filed suit requesting a declaratory judgement of non-infringement. Sketcher’s notes that the packaging and shoes themselves prominently display the Skechers trademark and that numerous other shoe manufactures sell products that feature a striped pattern. Skechers requests that the court declare that the Goldie shoe does not infringe, dilute, or otherwise violate any of Adida’s trademark rights and that Sketchers be awarded attorney’s fees.

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