Deckers is an interesting company. The California-based footwear designer and distributor is one of the more legally innovative (and aggressive) ones when it comes to the company’s seemingly most prized brand, Ugg Australia. Filing countless trademark and design patent lawsuits over the past year alone in an attempt to cut down on the number of lookalike boots and maintaining dedicated social media accounts to educate consumers about counterfeits, Deckers is known for its fierce protection of the intellectual property (“IP”) associated with the ugly-but-popular boot brand, which it purchased in 1995. But such vigilant enforcement efforts come at the clear expense of its other most famous brand, Teva.
As we told you on the heels of the S/S 2014 runway shows, the classically sport-centric sandal – for which Teva is known – has been making its way onto the runway, albeit without any official involvement from Teva in almost every instance. High fashion’s adoption of sporty sandals came with a huge array of fashion publications referring to the footwear style – which was utilized by Prada, Chanel, Alexander Wang, Marc Jacobs, and other big names in recent season – as “Tevas,” “Teva-like,” “Teva-esque,” and so on.
A Teva by Any Other Name
Such usage of the Teva name is problematic from a trademark perspective (more about that in a moment), although it has not proven to be a point of contention for Teva. It could prove confusing for consumers, and Saks Fifth Avenue has seemingly taken it a step further for S/S 2017.
After showing what the fashion media called a bejeweled “Teva-like” sandal for S/S 2014, Prada presented an even closer replica of Teva’s classic sandal for S/S 2017. Consumers can now get their hands on the sandals – via pre-order, of course – for $545 from Neiman Marcus, Bergdorf Goodman, Saks Fifth Avenue and co.
Saks Fifth Avenue’s offering proves particularly interesting, as unlike all of the others selling the shoes, Saks explicitly lists the style as “Teva Strappy Grip-Tape Sandals,” which presents the question: Does an official Prada x Teva collaboration exist?
It does not appear so – at least not according to reps for Teva (and the giveaway lack of any Teva branding associated with the actual Prada sandals themselves), but the brand - unlike others - also does not appear to be all too troubled by the somewhat flagrant and widespread use of its name as a descriptive term.
Consider Chanel, for instance. The Paris-based brand’s legal counsel began cracking down on unauthorized use of its trademarked name years ago. The Paris-based design house has made its position rather well known. For many years, it has been taking out full page ads in popular trade publication, Women's Wear Daily, for instance, to inform editors, journalists, bloggers, etc., of its rights in the Chanel mark. The ad consistently includes the following language:
A note of information and entreaty to fashion editors, advertisers, copywriters and other well-intentioned mis-users of our Chanel name: Chanel was a designer, an extraordinary woman who made a timeless contribution to fashion. Chanel is a perfume. Chanel is modern elegance in couture, ready-to-wear, accessories, watches and fine jewelry. Chanel is our registered trademark for fragrance, cosmetics, clothing, accessories and other lovely things. Although our style is justly famous, a jacket is not ‘a Chanel jacket’ unless it is ours, and somebody else's cardigans are not ‘Chanel for now.’ And even if we are flattered by such tributes to our fame as 'Chanel-issime, Chanel-ed, Chanels, and Chanel-ized', PLEASE DON'T. Our lawyers positively detest them. We take our trademark seriously. Merci, Chanel, Inc.
Not merely a useless exercise, this policing of unauthorized trademark uses serves a very specific point. To prevent the genericization and thus, undoing of a trademark’s level of distinctiveness. In practice, brands oftentimes try to stamp out others’ use of its name as a descriptive term in order to ensure that the strength of their trademark remains intact. Otherwise, the mark becomes useless in its function of identifying a source of goods/services.
This is where Teva comes in. The term Teva is being used by fashion editors, advertisers, copywriters, bloggers, and now retailers as the name of a product itself (such as the Prada sandals and others that are made up of "webbing upper, hook & loop closure, universal strapping system, EVA footbed, and durabrasion rubber outsole" or some combination thereof) as opposed to identifying an exclusive source of the product.
The fact that Teva is being used not as a trademark but as a descriptive term to categorize a style of sandals could have seriously unpleasant effects on the term's status as a distinctive indicator of source. Moreover, in the case at hand, it could serve to seriously confuse consumers about what – exactly – they are buying.
While such usage of the Teva trademark without its authorization, particularly in the case of Saks Fifth Avenue, almost certainly amounts to trademark infringement (Teva has an arsenal of federally registered trademarks for its name), what about the design of the Prada sandal? Is the sandal, itself, legally problematic? That is not entirely unlikely, as Teva does, after all, maintain at least one design patent and utility patent in connection with its classic sandal design.
Teva: Fashion’s New Favorite Sandal?
Practically speaking, though, there might be a specific reason why Teva’s counsel has been lax to wage war against fashion industry figures including brands and retailers – using its name (and in Prada’s case, its design) in connection with runway accessories. Such connections arguably elevate the Teva brand and very well may find it a whole new market: The high fashion one.
Consider the case at hand. Prada is a highly celebrated luxury fashion house, and Teva is a sport-centric mass market brand; the two are quite distinctly situated, and because it is the high end brand channeling the lower end one, the damage here is arguably a lot less than if the situation were reversed.
Unlike Chanel, a historic design house with high fashion image to uphold, Teva could probably afford to up their image game just a bit, no? Thus, its connection to an Italian design house may not be the worst thing in terms of branding.
So, it is worth noting that while litigation is quite often an option when trademarks and patents are involved, it is not always the best business move, and that fact alone may be what is stopping Teva from sending out a flurry of cease and desists letters to everyone from Prada to Saks Fifth Avenue.
UPDATED (1/31/2017): After this article was published, Saks changed the description of the sandals to Prada "Strappy Grip-Tape Sandals."