Update: Adidas Responds & More Facts From Preliminary Ruling Revealed
A spokesperson for Adidas told Footwear News: “We are grateful that the court recognized the importance of protecting our valuable intellectual property. We will continue to fight to bring a complete stop to Skechers’ unlawful behavior.”
In the court’s ruling, obtained by FN this afternoon, Judge Marco Hernández stated, “The court finds Adidas is likely to succeed in establishing its right to enforce the marks and trade dress asserted here, including the unregistered Stan Smith trade dress. Adidas is also likely to succeed in showing that the Skechers shoes infringe Adidas’ marks and trade dress because the Skechers shoes are likely to cause consumer confusion. Finally, Adidas has produced sufficient evidence of irreparable harm and the other elements required to warrant injunctive relief.”
The court’s opinion went on to outline several specific factors to support its preliminary ruling in the case.
On Skechers’ intent in selecting its mark: “Skechers cannot deny that it knew the Stan Smith existed — Skechers used the terms ‘Adidas stan smith’ and ‘Adidas original’ in the source code for its webpage promoting its Onix shoe.”
On potential irreparable harm to Adidas: “Adidas has produced sufficient evidence of irreparable harm to warrant injunctive relief. First, Skechers’ infringement undermines Adidas’s substantial investment in building its brand and the reputation of its trademarks and trade dress. Adidas submitted evidence showing it has spent tens of millions promoting the Stan Smith, hundreds of thousands promoting its Supernova shoes, and nearly 40 million annually on goods bearing the Three-Stripe mark.”
What we reported earlier:
Germany-based footwear maker Adidas is celebrating a small victory in an early round of litigation proceedings against Manhattan, Calif.-based competitor Skechers USA Inc.
Adidas has obtained a preliminary injunction prohibiting Skechers from selling two already-discontinued styles of shoes and from using the word “Supernova” in connection with a third discontinued style.
In documents filed in federal district court in Portland, Ore., in Sept. 2015, Adidas alleged that Skechers infringed on its iconic Stan Smith sneaker, its three-stripe mark and its “Supernova” trademark. Skechers stated, in a release Monday, that all three styles of footwear mentioned in the suit are “commercially insignificant” and that it plans to appeal the ruling.
“The court’s ruling is preliminary, not final,” Skechers president Michael Greenberg said in a release. “Further, it involves only three minor and commercially insignificant Skechers styles that have already been discontinued, and does not create any disruption in our business or have any impact on sales whatsoever. While this is a non-issue from a commercial standpoint, we are disappointed in the ruling and fully intend to appeal it in order to ensure that our footwear designers retain the freedom to use common design elements that have long been in the public domain.”
In addition to the preliminary injunction it was granted, Adidas is seeking monetary damages and has asked the courts to require that Skechers expel all of its profits from the sales of the alleged knockoffs.
“Skechers is an ardent brander that goes out of its way to distinguish its products from those of its competitors,” Greenberg said. “We believe that none of our styles infringe Adidas’ intellectual property and that there is no likelihood that consumers who see the Skechers styles will be confused in the slightest. We believe the final outcome of this legal proceeding will vindicate our position.”
In the past year, Adidas and Skechers have been involved in several ongoing trademark infringement suits. In July 2015, Adidas filed a suit against Sears Holding Corp. and its subsidiary Sears Roebuck & Co. alleging trademark infringement of its signature three-stripe design. Skechers was on the receiving end of trademark infringement claims by Nike Inc. in Jan. 2016 and was among the 31 companies named in Converse’s infamous copyright suit filed in late 2014. In July 2015, Skechers levied its own round of copyright accusations against Steve Madden Ltd. for its Go Walk patent.