When Steve Madden dupes a high fashion brand’s shoe, is there a likelihood that consumers will be confused? It is a critical inquiry because it would be the crux of a trademark (or trade dress) infringement claim, but maybe more interestingly, the question is worthy of attention because the answer very well might be “no.” The brand’s eponymous founder shed light on this exact question recently, reflecting on a pair of ALAÏA mesh ballet flats that his brand and so many others have replicated – albeit without the ALAÏA name, logo, or price tag. Mr. Madden’s reaction: “Do you think some of my [customers] even know what ALAÏA is?”
Steve Madden’s response is a striking one. It is not just convenient for the Nasdaq-traded brand, which got its start back in 1990; it is probably true. Steve Madden’s consumers, who are spending between $60 and $200 for trend-inspired shoes, may not be well-versed in French fashion house ALAÏA’s offerings, including the $950 ballet flats at issue. And even if they are, they likely are not in the market for them due to the prohibitively expensive price tag. In other words, Steve Madden is probably not competing with brands in the upper echelon of the high fashion/luxury market.
Different Categories of Consumers
This point is important, as it would serve to chip away at claims that the likes of ALAÏA could wage against Steve Madden in a trademark infringement case – assuming, of course, they have trademark rights to rely on.
> In ALAÏA’s (hypothetical) case, the company may be able to argue that its signature fishnet Ballet Flats have amassed secondary meaning and thus, it maintains rights in the trade dress of the shoe. After all, the shoe has dominated the high-end footwear market – and the mass-market thanks to the sheer onslaught of dupes – in recent years, and in certain circles, it is an instant indicator of source. As ALAÏA-owner Richemont stated in its most recent annual report, “This year … marked the emergence of hero products, [including] the Ballet flats … [which] played a pivotal role in recruiting new clients and increasing brand awareness.”
As for whether that level of recognition is enough, there are also arguments to be made (among others) that the circles of consumers who would view the ALAÏA flats as indicators of source are limited – and so is the robustness of the company’s rights – due to the relatively limited scale of ALAÏA’s’s advertising, retail network, etc.
But back to Madden. The company is not on the receiving end of a trademark lawsuit from ALAÏA. It also has not been named as a defendant in litigation by Hermès for that matter, whose Oran sandals – which may be recognized by a bigger swath of consumers than ALAÏA offerings – have been the inspiration for a number of Madden styles, and maybe for good reason. If Thom Browne’s success in the trademark case waged against it by adidas is any indication, courts and juries are willing to consider price in an infringement equation.
In that case, a New York federal court ruled in Thom Browne’s favor, finding that the high fashion brand did not infringe adidas’s three-stripe trademark by using a four-stripe design on its own athletic wear.
Adidas had sought to block Thom Browne’s use of the four-stripe design. However, the jury and the court ultimately concluded that there was not a likelihood of consumer confusion, in part because the two brands occupy different segments of the market, with Thom Browne targeting a high-fashion audience and adidas offering mass-market sportswear
Interestingly enough, Steve Madden has enlisted Thom Browne’s counsel, Robert Maldonado of Wolf Greenfield, to represent it in the declaratory judgment matter that it recently filed against adidas over the parties’ respective uses of stripes.
Strides for Steve Madden
While much has been made – often, quite accurately – of the fluidity with which modern consumers shop, with the same individuals simultaneously buying apparel and accessories from mass-market and high-end brands and/or from retail and resale channels, alike, there may be a tipping point. Put another way, courts just might draw a line when the price differences are eye-watering, such as between a $950 ALAÏA ballet flat and a $90 Steve Madden dupe.
With this in mind, Madden might occupy a sweet spot that provides it with a legal safety net when it comes to its practice of offering up dupes of much more high-end (read: expensive) products.
As for an extra-legal perspective, it appears that the brand – long characterized as a “copycat” or “knockoff brand” – is making broader strides among a new generation of consumers, which are warming up to the brand and its eponymous founder. In a market where demand for dupes is surging, Steve Madden is emerging as a big winner.
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