A spokesperson for Crocs Inc. said the company plans to appeal a decision by the U.S. Patent and Trade Office to reject the design patent for its famous molded clog.
“Crocs is aware of the decision issued by the United States Patent and Trademark Office relating to one of its many design patents. The decision, which is simply the next step in the administrative process, allows Crocs to appeal to the Patent Trial and Appeal Board and eventually the Federal Circuit Court of Appeals,” the spokesperson said in an emailed statement. “This is the same court that previously ruled in Crocs’ favor in its enforcement of the same patent during its successful International Trade Commission case. Crocs is confident that the appeals process will result in a favorable ultimate outcome and allow it to continue to use this design patent, along with its many other intellectual property rights, to defend its iconic products well into the future. In the meantime, Crocs will continue to aggressively enforce its intellectual property portfolio against those who unfairly trade off of Crocs’ goodwill and reputation.”
What We Reported on Aug. 11
The U.S. Patent and Trademark Office this week issued a final rejection of the cornerstone design patent that made the Crocs Inc. brand a household name.
After a five-year legal battle that has seen Crocs and competitor USA Dawgs duel it out over claims of trademark infringement involving the D517789 patent, Dawgs received a favorable ruling from the USPTO, striking down the famous molded-clog design that Crocs has long accused Dawgs and others of infringing upon.
“For us this is quite significant — this is a testament and endorses what our position has been all along,” Dawgs CEO Steve Mann told Footwear News.
In rejecting Crocs’ ’789 patent as invalid, New York-based fashion lawyer Elizabeth Kurpis explained that the USPTO found that a similar design was published more than one year before Crocs applied for the patent.
“USPTO argued that Crocs’ patent is invalid because the shoe design could be ‘anticipated’ from prior similar shoe designs,” Kurpis explained. “Claims in a patent are deemed ‘anticipated’ if the subject matter of the claims was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public anywhere in the world before the effective filing date of the claimed invention.”
Over the course of Crocs and Dawg’s legal dispute, the ’789 patent had already been rejected twice before. But this time could be more significant, as a third rejection is “final and nonappealable through the USPTO,” Kurpis said.
“However, Dawg USA is not entirely out of the woods yet,” she cautioned. “Crocs has the option to file a notice of appeal with the Patent Trial and Appeal Board over any adverse decision within one month or 30 days — whichever is longer. From there, if Crocs is unhappy with the PTAB determination, they are free to thereafter appeal to the Federal Circuit courts.”
She added, “In other words, this is far from over should Crocs choose to continue fighting the issue.”
Nevertheless, Mann is finding some solace in the victory and said he views it as a step toward leveling the playing field for Crocs’ competitors.
“There have been questions about [our position] and claims of harassment [as well as accusations] that our legal [complaints] are frivolous, and that obviously isn’t the case,” Mann said. “We’re going to do everything to get back into the market so that we can have a fair and level playing field.”
While the dispute over the ’789 patent goes back five years, the legal imbroglio between Crocs and Dawgs dates back to 2006 when Crocs filed suit against Dawgs’ Canadian affiliate Double Diamond and several others for patent infringement on its popular clog designs. Crocs, in 2012, amended that complaint and added USA Dawgs as a defendant.
In August 2016, Dawgs filed a 110-page complaint accusing 18 former and current Crocs employees and directors of violating antitrust laws in order to help the company gain an unfair edge in the clog footwear market.
And in July 2017, Dawgs filed its latest suit, alleging that Crocs infringed on its Z-strap sandal and that several of its employees engaged in corporate sabotage and computer fraud.
In response to the newest complaint, a spokesperson for Crocs had accused Dawgs of harassment and called the new claims “frivolous.”
“This recent complaint filed by USA Dawgs in Nevada is yet another attempt to harass Crocs and disrupt its business,” the spokesperson said. “The claims contained therein are not only unfounded and without merit, they are an attempt to personally attack otherwise innocent individuals.”
Regarding the latest USPTO rejection, Kurpis said that if Crocs does not file a notice of appeal during the 30-day period, the USPTO will issue and publish a certificate canceling any claim of its patent.