Off-White is going there. After counsel for Virgil Abloh’s buzzy designer label asserted legal rights in his particular brand of quotation marks in the since-settled lawsuit they filed against a bracelet company this spring, the brand’s legal team has filed a mass of trademark applications over the past several months. In addition to seeking registrations for stylized versions of the word “OFF” for use on things, such as “ashtrays, cigarette lighters, electronic cigarettes, cigarette filters, tobacco pipes, and cigarette holders,” and the placement of arrows on the side of a sneaker, Off-White is claiming exclusive legal rights in one specific use of quotation marks.Read More
In a matter of five years, Allbirds has managed to build what it says is a $1.4 billion business based on what have been called “the world’s most comfortable shoes.” Under the watch of co-founders Tim Brown and Joey Zwillinger, the San Francisco-based sustainable footwear startup has largely made its name thanks to its marquee Wool Running sneakers, which are part of “an entirely new category of shoes, ones inspired by natural materials,” something of a rarity in the athletic shoe world. Now, Allbirds and its “it” sneakers are being knocked off.
On the heels of filing a since-settled lawsuit against Steve Madden in late 2017, claiming that the trendy footwear giant ran afoul of trademark law by copying its wool trainer, Allbirds is suing again. This time the buzzy brand is taking on Austrian footwear company Giesswein Walkwaren for manufacturing and selling sneakers that are “identical in all material respects” to Allbirds’s Wool Runners.
According to the complaint that Allbirds filed in with the U.S. District Court for the Northern District of California early this month, Giesswein is on the hook for “deliberately and willfully copying Allbirds’” footwear – which is protected by trade dress, a subset of trademark law that extends to the appearance of a product that serves to indicate its source in much the same way as a brand name or logo – and its trademark protected “Wool Runners” name.
What is Allbirds’ trade dress exactly? The brand claims that it consists of a “sneaker-type shoe featuring wool-like texture on the entirety of the upper outer; embroidered eyelets; shoelaces composed of a three-yarn lace woven together; midsole and outsole of shoe appear attached as one piece; and a series of horizontal lines visible across the width of the sole of the shoe that extends the entire length of the sole.”
In much the same way as consumers have come to associate the Allbirds name with “revolutionary footwear,” the footwear company claims that as a result of its “extensive advertising and promotion of” its Wool Runners, “widespread media coverage of [its] Wool Runners shoee,” the “immediately distinguishable, unique and distinctive appearance” of the shoes, themselves, and its sale of “millions of dollars-worth of Wool Runners shoes,” consumers have come to associate the mere appearance of the woolen running shoes with the Allbirds brand, thereby giving rise to trade dress rights, which Giesswein infringed by making copycat footwear.
Allbirds asserts that Giesswein acted willfully in creating an infringing footwear line that not only imitates the look of Allbird’s Wool Runners footwear but also makes use of its Wool Runners trademark in their title, something that is likely to cause confusion amongst consumers as to the source of the lookalike-but-entirely unauthorized shoes.
More than that, though, Giesswein has allegedly refused to stop “audaciously and falsely advertising” itself as the original creator of Wool Runners footwear on social media, and instead of “remedying their confusing use of the Wool Runners brand and misleading advertisements,” Giesswein responded to Allbirds cease and desist demands by asking the U.S. Patent and Trademark Office to cancel Allbirds’s federally registered “Wool Runners” trademark, arguing that “wool runners is a generic or merely descriptive” term.
With all of this in mind, Allbirds has called foul, citing claims of trademark and trade dress infringement, false advertising, and federal unfair competition, among others, and has asked the court for preliminary and permanent injunctive relief. The company also wants the court to require Giesswein to destroy any infringing or diluting footwear products, in addition to paying Allbirds an array of damages.
Meanwhile, Giesswein is in the midst of litigation with Rothy’s, another of-the-moment direct-to-consumer footwear startup, which accused it of by infringing the “distinctive shape and design” of its design patent and trade dress-protected The Flat ballet flats.
That case, which joins a handful of other direct-to-consumer brand litigations as young consumers goods startups continue to win over millennials shoppers, is also currently underway in the U.S. District Court for the Northern District of California.
The case is Allbirds, Inc. v. Giesswein Walkwaren AG et al, 3:19-cv-05638 (N.D. Cal.).
Five months ago, Instagram’s “coolest man” Gianluca Vacchi filed a copyright infringement and false designation of origin lawsuit against E*Trade in a New York federal court. In his April 2019 complaint, 52-year old Vacchi – a retired investor and the current non-executive director of IMA, his family’s Bologna-based machinery and packaging empire – alleged that E*Trade ran afoul of the law by copying “the persona and character [he] created for its own commercial purposes and financial gain” by way of not one but two television commercials that “simply rip-off of a number of videos created and published by Vacchi over the years.”Read More
The latest celebrity to be sued by a paparazzi photographer? Victoria Beckham. The former Spice Girl-turned-fashion figure is on the receiving end of a new copyright infringement lawsuit after posting a photo of herself to her Instagram story this summer. According to the complaint that counsel for Felipe Ramales filed in a New York federal court on Tuesday, Beckham did not seek the photographer’s “permission or consent” before posting the image of herself on her Instagram account nor did she – or her corporate entities, Victoria Beckham INC. and VB Beauty LLC – pay to license it.Read More
With the general rise in social media usage and the decline in conventional advertising formats has come a surge in Instagram-centric ad efforts. This push to meet consumers where they are, i.e., on Instagram, and other social media platforms, has meant that the jobs of influential figures – whether it be fashion bloggers, editors and runway models or reality television stars and more traditional Hollywood celebrities – have expanded to include building and maintaining sizable social media followings in order to leverage those followings for big-money advertising partnerships.Read More
The explosion of cannabidiol, or CBD, products – from trendy cosmetics to dietary supplements – is catching the attention of the Federal Trade Commission (“FTC”). The until-very-recently little-known chemical compound currently represents a $5 billion market, according to cannabis industry research consultancy Brightfield Group, up a whopping 700% in value from last year, and unsurprisingly, brands, whether they be CBD-specific beauty and skincare brands or established names in luxury cosmetics, are rushing to the market.Read More
Burberry, Gucci, and Gabriela Hearst – these are a few of the major names that are going carbon neutral. Burberry made public its carbon emission goals in June, and has since followed up by declaring that its Spring/Summer 2020 show “has been certified as carbon neutral.” Gucci followed suit when it revealed by way of an Instagram campaign and formal announcement this month that it will be completely carbon neutral by the end of September – from its own in-house operations to those of its third-party suppliers. Still yet, sustainable luxury brand Gabriela Hearst confirmed that it offset its Spring/Summer show emissions, thereby, producing a carbon neutral show.Read More
Adidas cannot prevent others from registering 2-stripe trademarks, at least not in Japan. In a recent proceeding before the Japan Patent Office (“JPO”), the national intellectual property body shot down adidas’ attempt to invalidate Marubeni Footwear’s registration for a diagonal 2-stripe trademark. In an April 2018 filing, adidas sought to have the JPO cancel Marubeni’s registration, arguing that the Tokyo-based footwear brand obtained the mark in furtherance of “a malicious intention to take advantage of the reputation of [adidas’] famous trademark and impair the goodwill embodied in its iconic three stripes.”Read More
For decades, Walmart solidly held the reins as the largest retailer in the world. The Bentonville, Arkansas-based multinational retail corporation’s competition trailed far behind and it could afford to focus almost exclusively on its roots as a big-box retail chain, selling low-priced staples, such as laundry detergent, paper towels, bottled water, groceries, and even apparel basics and electronics, in all 50 states and beyond. Despite bringing in upwards of $500 billion per year in revenue as of 2017, Walmart has fallen short where its fast-growing rival, Amazon, has made its name: online.Read More
A legal battle over the Kardashian’s controversy-causing Khroma Beauty could end up in front of the nation’s highest court if a European makeup licensee has its anything to do with it. Kim, Kourtney, and Khloe Kardashian landed on the receiving end of a trademark infringement lawsuit in September 2014 when Kroma Makeup EU, LLC accused them of willfully hijacking the name of their now-defunct beauty brand, thereby, causing the already-established Kroma to lose sales as a result of “consumer confusion with the Kardashians’ Khroma products” and ultimately shutter, as well.Read More