You may recall the little piece we published not too long ago drawing your attention to the potentially infringing elements of Isabel Marant’s Bart sneaker. Well, it appears Marant isn’t the only one channeling Adidas’s classic Stan Smith, a style that is very much “in fashion” right now. Alexander McQueen is, too, Its Oversized Sneaker (pictured below on A$AP Rocky and A$AP Nast) has been grabbing quite a bit of attention, namely because it arguably resembles Adidas’s classic style. But let’s back track from a minute, and get all the facts straight. As we told you in the Marant/Adidas article, in order to determine if Adidas actually has a merited claim, we need to know what rights Adidas actually holds in connection with the heel tab – the most obvious element that it shares with the McQueen sneakers.

Adidas does not appear to have a design patent registration that covers the colored heel tab on the back of its Stan Smiths. However, the German sportswear giant could argue that its Stan Smith heel tab is protected under the umbrella of trade dress. (Trade dress refers to the total image or overall design or appearance of a product and may include features, such as size, shape, color, color combinations, texture and graphics).

According to both the U.S. Patent and Trademark Office (USPTO) and a relatively recent court hearing, Adidas has protected rights in its “Superstar Trade Dress,” and implicit in that design is the heel tab. As distinct from classic trademark rights, which extend to any word, phrase, symbol, design or combination thereof, trade dress protection extends to a product’s physical appearance, including its size, shape, color, design, and texture. According to the Adidas America v. Payless Shoes case, which was decided in 2008 in the U.S. District Court for the District of Oregon, “Adidas first introduced the Superstar Trade Dress in 1969 and its principle features have not changed since that time. It consists of: (1) three parallel stripes (i.e., the Three—Stripe Mark) on the side of the shoe parallel to equidistant small holes; (2) a rubber ‘shell toe’; (3) a particularly flat sole; and (4) a colored portion on the outer back heel that identifies the shoes as Adidas’ brand.”

 Adidas Stan Smith (left) & Alexander McQueen Oversized Sneaker (right) Adidas Stan Smith (left) & Alexander McQueen Oversized Sneaker (right)

Looking to Adidas’ most relevant trade dress registration and its application in the Payless case, we learn that the heel tab is a critical aspect in the Superstar design. In fact, the registration specifically lists the “colored portion on the outer back heel that identifies the shoes as Adidas’ brand” as a protectable element. Given Adidas’ federal registration and because the McQueen shoe employs a very similar design element (the heel tab), one that is arguably employed by Adidas to serve as an indication of source, Adidas very well may have a merited infringement claim. After all, the two brands’ heel tabs do look pretty similar. Adidas’ Stan Smiths come in a variety of color variations (think: green, red, blue, black, etc.) with “Stan Smith” written in white, along with the Adidas logo. McQueen is currently offering black, red, and blue versions with “Alexander McQueen” written in gold. The fonts, however, are a bit different, as is the size of the text.

In addition to showing it has a non-functional, distinctive trade dress, in order to win a trade dress lawsuit, Adidas must also establish that an appreciable number of ordinarily prudent consumers of the type of product in question are likely to be confused as to the source of the goods. In plain English: a fair share of people need to be confused (in theory) as to the source of the McQueen sneakers and think that they are in some way connected to and/or affiliated with Adidas. This is where McQueen may be in luck. There is a chance that its shoes, with their “oversized rubber soles,” appear to be different enough as a whole to dissuade consumers from potentially being confused into thinking they are Adidas products. This is an inquiry that is bit difficult to predict. So, I’ll leave you to ponder it.

But maybe even more importantly for both Isabel Marant and Alexander McQueen is the fact that not all decisions to file or not file lawsuits are based purely on legality; other factors are absolutely taken into consideration by the moving party. For instance, we suggested on the heels of Jeremy Scott’s McDonalds-inspired collection for Moschino that the fast food chain likely wouldn’t file suit (and it didn’t) because the benefits of being depicted in a high fashion light likely outweighed the disadvantages. In other instances, appearing to be excessively litigious may be damaging to a brand’s image. A big brand that goes around constantly suing much smaller companies is not exactly a way to win over consumers. As such, it is important for brands to be calculated in terms of filing lawsuits, and their counsels know this.

Here, it appears that Adidas, which not so secretly has a lot on its plate at the moment, may just be too concerned with other matters. The company was slapped with a major trade secret misappropriation lawsuit by Nike in December. While not named as a defendant in the lawsuit, Adidas is circumstantially very involved, as it is contractually responsible for covering the legal bills of the three designers who joined the company from Nike. And in case that’s not enough, amidst talk that it is losing major ground in the U.S. to Nike, the German sportswear company is in the process of positioning a new CEO and ousting Herbert Hainer, who has served as CEO since 2001.

If we take these Adidas-specific circumstances into account, there’s a chance the company has looked at Isabel Marant and Alexander McQueen, which likely will not sell excessive quantities of their pricey Stan Smith lookalikes in the season or two that they will be on the market, and decided to use its recourses in ways that it deems to be more important. It costs money and takes time to enforce your intellectual property rights, after all.