Adidas Gets Preliminary Injunction Against Skechers

Bloomberg BNA’s Patent Trademark & Copyright Law Daily™is the IP industry’s premier news service, offering objective, timely,and reliable daily news coverage and commentary from leading IP law...

By Anandashankar Mazumdar

Feb. 16 — Adidas has won a preliminary injunction against Skechers—barring the sale of three styles of sneakers—pending the outcome of trademark and trade dress infringement claims, the U.S. District Court for the District of Oregon ruled Feb. 12.

The court found that Adidas had established a likelihood of success on the merits of its claims that Skechers infringed its unregistered “Stan Smith” sneaker design as well as its registered three-stripe design and “Supernova” trademark.

(Click image to enlarge.)

adidas sneaker

skechers sneaker

In a press release, Skechers said that the shoe styles affected by the injunction were “commercially insignificant and discontinued,” but it would appeal the ruling “in order to ensure that our footwear designers retain the freedom to use common design elements that have long been in the public domain.”

“We will continue to fight to bring a complete stop to Skechers’ unlawful behavior,” an Adidas spokeswoman told Bloomberg BNA in an e-mail message.

Stan Smith Style Released in 1973

Adidas America Inc. of Portland, Ore., is the U.S. subsidiary of international athletic footwear company Adidas AG of Herzogenaurach, Germany. It claims trademark rights in a design comprising three, slanted stripes.

In the early 1970s, Adidas introduced a tennis shoe named after American tennis player Stan Smith, who was active from 1969 to 1985 and was ranked world No. 1 in 1972.

The Stan Smith design comprised an all-white sneaker with the three-stripe pattern produced by perforations and stitching on the side of the shoe.

In October, Adidas sued Skechers USA Inc. of Manhattan Beach, Calif., alleging that its Onix sneaker copied its unregistered Stan Smith trade dress.

Adidas' complaint also alleged that the Relaxed Fit Cross Court TR infringed its registered three-stripe trademark, and that Skechers Relaxed Fit Supernova sneaker infringed Adidas' registered trademark rights in the term “Supernova.”

Stan Smith Sneaker Has Acquired Distinctiveness

The court found that the Stan Smith trade dress—even though it had not been registered as a trademark—was sufficiently distinctive to be protectable.

The court referred to “numerous earned media articles and other clips from a range of sources as evidence of the iconic nature of the Stan Smith.”

For further evidence of acquired distinctiveness, the court even quoted from the lyrics of “Jigga That Nigga,” which appeared on hip-hop recording artist Jay Z's 2001 album “The Blueprint,” which mentions “the Stan Smith Adidas.”

Skechers's own behavior was evidence of the distinctiveness of the Stan Smith sneaker, the court said.

“The Skechers website was programmed in such a way that users who searched for ‘adidas stan smith' were directed to the page featuring the Skechers Onix shoe,” the court said. “The only reason ‘adidas stan smith' is a useful search term is that consumers associate the term with a distinctive and recognizable shoe made by adidas.”

The court also rejected the argument that the design features of the Stan Smith were functional and, thus, not protectable as trade dress.

“There is no utilitarian advantage gained from using the Stan Smith's particular set of features because they do not make the shoe work better or cost less than other similar sneakers in the current marketplace,” the court said.

Preliminary Injunction Supported by Evidence

The court then went on to find that the Skechers Onix created a likelihood of confusion with the Adidas Stan Smith under a eight-factor test set forth in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 204 U.S.P.Q. 808 (9th Cir. 1979).

On the “Supernova” issue, the court rejected the argument that the word was descriptive of the shoe's color scheme.

Having found a likelihood of confusion and, thus, a likelihood of success on the merits of Adidas' trademark infringement claims and also its trademark dilution claims, the court also found a likelihood of irreparable harm to Adidas in the absence of pre-judgment relief, and that the balance of equities and the public interest favored the imposition of a preliminary injunction.

The court's ruling was issued by Judge Marco A. Hernández.

Adidas was represented by Perkins Coie LLP, Portland, Ore. Skechers was represented by Lane Powell P.C., Portland.

To contact the reporter on this story: Anandashankar Mazumdar in Washington at amazumdar@bna.com

To contact the editor responsible for this story: Mike Wilczek in Washington at mwilczek@bna.com

For More Information

Text is available at: http://src.bna.com/cFA.