Golden Goose is attacking the trademark causes of action that New Balance is waging against it for allegedly infringing and diluting the common law trade dress that New Balance claims that it has amassed in its 990 sneakers by way of its own “lookalike” dad sneaker in order to “foster a perceived association between its products and New Balance in the minds of consumers” when no such association exists. On the heels of an unsuccessful motion to dismiss hearing late last month, Golden Goose has filed its answer, in which it denies the trademark and false designation of origin claims lodged against it by New Balance and sets out a number of affirmative defenses – and a counterclaim in furtherance of which it is seeking a court declaration that New Balance lacks trademark rights in the 990 sneaker design at issue.
In an aim to chip away at New Balance’s case, which centers on its alleged 990 trade dress, namely, a sneaker “(i) upper composed primarily of multiple tones of a single color (usually grey, blue, or black); (ii) Upper including mesh underlay with suede overlay creating mesh windows in forefoot and midfoot; (iii) Overlay bars in lateral and medial forefoot regions; (iv) Midsole having forefoot-to-midfoot portion of a first color (usually white) and different colored (usually grey) midfoot-to-heel portion; (v) Outsole of contrasting color (usually predominantly black); (vi) Reflective accents in upper; and (vii) Reinforced rear eyelets (usually two on both medial and lateral sides),” Golden Goose sets out almost a dozen affirmative defenses …
Failure to Describe Trade Dress – “For New Balance to plead valid and protectable trade dress rights in an unregistered product design, New Balance bears the burden to offer a precise expression of the character and scope of its claimed trade dress,” according to Golden Goose, which argues that New Balance “failed, as a matter of law, to offer a precise expression of the character and scope of its claimed trade dress in its Complaint.”
(It is worth noting that while New Balance sets out the aforementioned elements as a description of its 990 trade dress, it also claims that the trade dress stretches across six different 990 sneaker styles, prompting Golden Goose to argue in its November 2023 motion to dismiss that New Balance “relies on a fiction that there is such a [single] design as the 990.”)
No Secondary Meaning – New Balance’s pleaded trade dress is “not understood by the consuming public as identifying New Balance as the source or origin of products bearing the pleaded trade dress,” per Golden Goose, and as such, its claims “are barred because its purported trade dress rights are invalid and unenforceable against Golden Goose.”
Functionality – Golden Goose claims that New Balance “impermissibly seeks trade dress protection for functional features and the combination of features in which New Balance claims trade dress protection is functional.”
Genericness – “The combination of elements identified in the Complaint as comprising New Balance’s pleaded trade dress is generic and cannot be appropriated as a trademark or as trade dress,” per Golden Goose.
Estoppel – And finally, Golden Goose asserts that New Balance is “estopped by its own actions and failure to act, including acquiescing in third-party uses of the same and similar product designs, from making the claims in the Complaint.”
As for its single counterclaim, Golden Goose is seeking a Declaration that New Balance maintains “no common law trade dress rights in the 990 shoe.” Specifically, Golden Goose contends that the trade dress that New Balance bases its case on “does not constitute protectable trade dress in any of its six iterations, or collectively because the design lacks secondary meaning, is functional and is not an indicator of source.” Given that the “overall design of the 990 is not protectable trade dress and is in the public domain,” the Italian sneaker-maker, which is known for its $500-plus handcrafted sneakers, claims that it is “entitled to offer for sale, advertise, promote, distribute and sell its Dad-Star sneaker and any other shoe without threat of action from New Balance.”
Despite New Balance’s alleged lack of rights in the 990 design (since the design “has not acquired secondary meaning, is functional and non-source identifying”), Golden Goose claims that New Balance has, nonetheless, brought this action claiming false designation of origin under the Lanham Act, and trademark infringement and dilution under Massachusetts law, and demanded that it cease selling its Dad-Star shoe.
Against that background Golden Goose says that it is “in need of, and is entitled to, a judicial declaration that the design for New Balance’s 990 shoe, in each and every iteration, and collectively, does not function as an indicator of source and therefore New Balance does not own any common law trade dress rights in that design.”
The case is New Balance Athletics, Inc. v. Golden Goose USA, Inc., 1:23-cv-11898 (D.Mass.).
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