Notorious copycat Steve Madden is at it again. The New York-based brand has been slapped with a trade dress infringement lawsuit from AirWair International, a subsidiary of Dr. Martens footwear (“Dr. Martens”), for “knowingly and intentionally” copying one its best selling shoe designs. According to United Kingdom-based Dr. Marten’s complaint, which was filed in the U.S. District court in the Northern District of California, Steve Madden is producing footwear that is “substantially identical” to the well-known Dr. Marten’s 1460 Boot.
Dr. Martens – which describes itself not only as “widely recognized and extremely popular” but also as a brand that has “achieved recognition as ranking among the world’s greatest and most recognizable brands” – alleges that Steve Madden is making very specific and blatant use of its 1460 Boot trade dress. The supposedly infringing footwear “unlawfully copies and uses the Dr. Martens trade dress and distinctive features of Dr. Martens footwear, including the two tone grooved sole edge, DMS undersold, and heel loop.”
For the uninitiated, trade dress is a type of trademark protection that extends to the overall commercial image of a product that indicates or identifies the source of the product and therefore, distinguishes it from others. This can include the design of a product, as well as the shape or configuration of a product.
Dr. Martens specifically claims that similarity between its shoes and Madden’s is no coincidence. Instead, Dr. Martens alleges that “this is an ‘exceptional case’ of infringement … because Steve Madden knowingly and intentionally copied Dr. Martens trade dress.” As a result, the alleged copying is “likely to cause confusion, or to cause mistake, or to deceive.”
The company further alleges that Steve Madden “acted with knowledge of the fame and reputation of the Dr. Martens trade dress with the purpose to … willfully and intentionally confuse, mislead, and deceive members of the public.” The complaint additionally says that consumers not only are at risk for confusion, but that “Steve Madden’s offering for sale of the infringing footwear … has caused confusion” already.
In addition to a likelihood of confusion, Steve Madden’s allegedly infringing products are “likely to dilute, blur, and tarnish the distinctive quality of the Dr. Martens trade dress, and lessen to capacity of the Dr. Martens trade dress to identify and distinguish the company’s product.” The complaint goes on to state that Steve Madden “had no right to use the Dr. Marten trade dress … and promotion of the infringing footwear in the United States is without authorization of consent from [Dr. Martens].”
Still yet, Dr. Martens goes on to state that “Steve Madden’s conduct in copying the Dr. Martens trade dress has been systematic and deliberate. Steve Madden has copied the Dr. Martens trade dress, and the overall style and configuration of Dr. Martens boots and shoes in a deliberate and calculated attempt to trade upon the popularity and distinctive appearance and design of Dr. Martens footwear.”
As a result, Dr. Martens – which has set forth claims for trade dress infringement, unfair competition and false designation of origin, and federal trademark dilution – is seeking both preliminary and permanent injunctive relief, the removal of all advertisements of said infringing products, “an accounting of Defendants’ profits arising from [their] unfair competition and trademark infringement”, damages, attorneys fees, and any “other and further relief [the] court may deem just.”