Steve Madden Hits Roadblock in Rothy’s Suit After Judge Throws Out Motion

Rothy’s Inc. has secured a victory in its ongoing legal battle against Steven Madden Ltd.

On April 30, a judge in Delaware District Court denied Steve Madden’s motion to dismiss two of nine counts brought by Rothy’s — namely, trademark dilution and patent infringement.

“We care deeply about protecting the intellectual property Rothy’s works so hard to create, including for The Point. In the pending lawsuit, we are asking the court to hold Steve Madden accountable for what we have alleged is copying of our intellectual property,” Marie Satterfield, SVP, general counsel and corporate secretary at Rothy’s, told FN in a statement today. “Beyond that, it is Rothy’s customary practice not to comment on the details of pending litigation.”

Rothy's The Point, Madden's Rosy Flats
Rothy’s The Point vs. Madden’s Rosy flats.
CREDIT: Courtesy

Madden filed a suit against Rothy’s in August 2019 after receiving a cease-and-desist letter from the San Francisco-based startup, which claimed Madden’s Rosy flats were a “slavish copy” of its The Point. In an August court filing, Madden argued that Rothy’s had no right to demand it cease and desist, alleging that The Point is “strikingly similar to numerous other ballet flats that have long been sold in the marketplace.” The brand claimed that its Rosy flats infringe neither on Rothy’s patent or trade dress rights.

But in a countersuit in October 2019, Rothy’s brought forth claims of trademark dilution and design patent and trade dress infringement, as well as unfair competition. In December 2019, Madden filed its motion, denied last week, to throw out two of the nine counts brought.

Over the years, Madden has been involved in numerous legal disputes over purported infringement. A decade ago, British fashion brand Alexander McQueen filed a trade dress suit alleging that its Faithful boots were being copied by Madden’s Seryna boots. (The two later settled out of court.) That same year, Balenciaga filed a complaint against Madden over its lookalike Lego-inspired sandals; the French house received a payment of an undisclosed sum from the fast-fashion giant. Further, in 2017, eco-friendly label Allbirds accused Steve Madden of copying the design of its signature wool lace-up sneaker. In 2018, Alice + Olivia filed a suit against the Steve Madden-owned Betsey Johnson label for copyright and trademark infringement, alleging that Betsey Johnson used its signature face, the “StaceFace” on its handbags.

More recently, Steve Madden and Yves Saint Laurent settled a dispute out of court in May 2019, after Saint Laurent alleges that Madden’s Sicily flats design infringed upon its high-heeled Tribute sandal. And in addition to the Rothy’s suit, Steve Madden is currently involved in litigation against Deckers Outdoor Corp.-owned Ugg. In an April filing, Deckers claims that Steve Madden’s Fuzz sandal is a “bad faith” copy of Ugg’s Fluff Yeah.

A representative from Steve Madden did not immediately respond to FN’s request for comment.

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