The litigation spree that UGG’s parent company Deckers has initiated against the makers of lookalike UGG boots has a new case in the mix. Three years after filing suit against Target for allegedly offering up copies of UGG’s Bailey Button boots, Deckers has filed a new suit against Target, accusing the Minneapolis-headquartered retailer of copying the same trade dress and patent-protected boot and selling them in “bad faith.”
According to Deckers’ suit, which was filed late last week in U.S. District Court for the Central District of California, Target is on the hook for “designing, manufacturing, advertising, marketing, distributing, offering for sale, and/or selling products that bear designs almost identical to [its] Bailey Button Boot trade dress.” A subset of trademark law, trade dress protects the overall image of a product, such as the color, shape, size, and/or configuration, as long as the design has the same source-identifying function as a traditional trademark, such as a logo or word mark.
Here, Deckers points to Target and Iconix’s alleged infringement of its Bailey Button Boot – which consists of a “classic suede boot” with “exposed fleece-type lining, curved top edges on the overlapping panels, [and] one or more buttons (depending on the height of the boot) prominently featured on the lateral side of the boot shaft adjacent the overlapping panels, on the front panel” – and calls foul.
The footwear company claims that “due to its extensive promotion and sales of products bearing [the] said trade dress within the state of California,” and thanks to the fact that it has “sold hundreds of millions of dollars’ worth of UGG products bearing the Bailey Button Boot trade dress,” that design “has achieved widespread acceptance and recognition among the consuming public and trade throughout the U.S,” and thus, is a valid – and enforceable – trade dress.
Deckers – which argues that Target’s actions are “willful, deliberate, and intended to confuse the public and to injure [it]” – also points to a design patent covering the design of the Bailey Button boot.
In addition to naming Target in the suit, Deckers also accuses Iconix Brand Group – the licensee behind Target’s Mossimo Supply co. brand – of acting in “reckless disregard of [its] rights” by making unauthorized use of its trade dress in the furtherance of a “calculated purpose of misappropriating Deckers’ goodwill and reputation in the market.”
Deckers alleges that both Target and Iconix’s “bad faith” efforts – which center on their manufacture and sale of the lookalike footwear – “have misled and confused and were intended to cause confusion, or to cause mistake [among consumers], or to deceive [consumers] as to the affiliation, connection, or association of the [allegedly infringing] products with Deckers, or as to the origin, sponsorship, or approval of the products by Deckers.” In short: Deckers argues that due to the lookalike nature of its boots and the ones being sold by Target, consumers are likely to be confused as to the source of the copycat boots, and believe that they are, in some way, connected to UGG and Deckers even though they are not.
With the foregoing in mind, Deckers sets forth claims of trade dress infringement, unfair competition, and patent infringement, and is seeking preliminary and permanent injunctive relief to bar Target and Iconix for making and selling the footwear at issue, as well as an array of damages, including “all gains, profits and advantages derived from [their ] wrongful acts.”
To date, Deckers has named the Gap, H&M, J.C. Penney, Walmart, K-Mart, and Aeropostale, among others, for allegedly infringing the designs of its famous sheepskin boots, ones that at the height of their success in the mid-2000’s were selling every 8 seconds across the globe.
*The case is Deckers Outdoor Corporation v. Target Corporation et al, 2:19-cv-06215 (C.D. Cal.).