After creating one of the most coveted sneakers of the past several years, the Willow sneaker (and its various iterations), Isabel Marant has released her Bart low-tops. Stocked by Barneys, Net-a-Porter, Luisaviaroma, etc., the Bart style, which retails for $475, consists of a white calfskin body with round toes and metallic red logo heel tabs. At issue here is not necessarily the overall appearance of the shoe design as a whole, but more specifically, the placement and positioning of the heel tabs because they give the shoes a rather distinct Adidas feel. And when an aspect of a design serves as an indicator of source (or brand), that connection raises a trademark inquiry. So, what do we have here?

In order to determine if Adidas actually has a merited claim against Paris-based Marant, which would most likely come in the form of a trade dress infringement claim, we need to know what rights Adidas actually holds in connection with the heel tab. 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, “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.”

Isabel Marant's Bart sneaker (left) and Adidas's Stan Smith (right)
Isabel Marant’s Bart sneaker (left) and Adidas’s Stan Smith (right)

A quick glance at the Isabel Marant sneakers and Adidas’ Stan Smith style reveals some noteworthy similarities. Both shoes bear similar white bodies and thin, flat soles, seven eyelets for laces on each side of the shoe, similarly placed stitching and arguably similar stripe designs on the side. However, as noted above, most interesting and most likely to give rise to a claim of trade dress infringement is the not the similarity of the two shoes in their entirety (although Adidas may have a trade dress infringement argument that considers the entire design in accordance with its registration). Instead, the placement of the colored heel tab is the common element between the two shoes that is most striking and thus, arguably is the most questionable.

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 Isabel Marant Bart 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 look pretty similar. Adidas’ Stan Smiths come in a red variation with “Stan Smith” written in white, along with the Adidas logo. Marant’s are a metallic red with “Isabel Marant” written in white. The fonts, however, are a bit different, as is the size of the text. Moreover, while Adidas uses a darker thread to secure its heel patch, Marant uses white thread. These things matter in the similarity inquiry.

As you may know, the ultimate question in a trademark or trade dress infringement action revolves around whether there is a likelihood that consumers will be confused as to the source of the Isabel Marant sneakers; this includes the belief that Adidas is in some way associated with the Marant sneaker. Considering the rate at which Adidas has been scooping up fashion industry insiders (think: Raf Simons, Yohji Yamamoto, Rick Owens, Mary Katrantzou, Stella McCartney, etc.) to design collections for the German brand, this isn’t such a far fetched argument.

Moreover, given its association with such high fashion designers, Adidas differs from say, McDonald’s, for instance, which Jeremy Scott channeled (aka infringed) for his Fall/Winter 2014 collection for Moschino. As I stated at the time, it was likely in McDonald’s best interest to allow Scott to co-opt its trademarks, as the fast food chain could definitely use a high end image makeover. And in that case, there was little cause for concern for McDonald’s in terms of confusion because last time I checked, McDonald’s isn’t in the business of creating pricey garments and accessories. In that way, McDonald’s likely gained more than it lost. Adidas is different because the likelihood of confusion amongst consumers is much greater, as it is in the business of selling shoes and clothing.

A concern that is implicit in both cases, the McDonald’s one and the Adidas/Marant one, is the duty that a trademark or trade dress owner has to police his trademarks. Unlike other forms of intellectual property, which have definitive terms of duration (example: life of the author + 70 years for copyright), trademark rights could hypothetically last forever if the trademark holder ensures that his mark does not become generic. He does so by enforcing his mark, making sure that others are not using it without his authorization. This extends to trade dress. With this in mind, it is important for trademark holders like Adidas and McDonald’s to choose their legal battles, considering when they want to take a risk to potentially reap benefits (such as a glamorous revamp or free press or whatever) at the expense of potential genericization of the trade mark or trade dress.

I’m not sure Adidas has anything to gain by allowing Marant to use an otherwise distinctly Adidas design element. Feel free to let me know if you disagree.