Skechers has waged a new trademark lawsuit against Brooks, accusing its fellow sneaker-maker of infringing – and diluting – its “famous ‘S’ logo” by using a “confusingly similar ‘5’ mark” on footwear. In the complaint that it filed with a California federal court on June 28, Skechers alleges that the stylized number “5” that appears on Seattle, Washington-headquartered Brooks’ sneakers is “substantially identical to many of Skechers’ ‘S’ marks and is used on similar products marketed to the same consumers, making it highly likely that consumers will be confused as to whether Skechers is responsible for, distributes, has authorized or licensed, or is otherwise involved with the shoes Brooks sells.”
Setting the stage in the complaint, Skechers asserts that for 30 years, it has “designed and sold quality, affordable and stylish shoes for men, women and children.” Over the course of its operations, Southern California-based says that it “has invested and spent hundreds of millions of dollars creating and promoting its brand, including various versions of its famous stylized ‘S’ mark, to which [it] has exclusive, incontestable rights” – and for which it maintains “at least 40” federally registered trademarks bearing its “S” marks for use on “a variety of platforms and products, including e-commerce, apparel, handbags, footwear, and more.”
“Due to the substantial advertising and sales of [its] products,” Skechers claims that its “S” marks “have become closely associated in the minds of consumers with the Skechers brand when used on footwear,” including running shoes. (In a nod to Brooks’ focus on running sneakers and in an apparent attempt to bolster its likelihood of confusion claim, Skechers notes that “in the last decade, [it] and its footwear products have been recognized [and given awards] … for the high quality of its running shoes.”)
Against this background, Skechers asserts in the newly-filed lawsuit that Brooks is running afoul of the law by “manufacturing, advertising, marketing, and selling athletic footwear” that bears a “confusingly similar” number 5. (Skechers notes that Brooks habitually manufactures and sells products with a style name and occasionally a generation number,” such as “Levitate 5.”) While Brooks has used a “variety of fonts over time on its footwear,” Skechers contends that for a number of recent styles, Brooks “changed the fonts it had used in the past and adopted an italicized ‘5’ that is virtually indistinguishable from Skechers’ well- known ‘S’ marks and the font used in the Skechers [word] mark.” Brooks did so, according to Skechers, “despite [its] awareness of Skechers’ marks, including the stylized ‘S’ mark used on Skechers’ running footwear.”
“Further adding to likely consumer confusion,” Skechers alleges that Brooks “places its stylized ‘5’ mark on the top of the tongue of its shoe and in a location separate from any other markings, just as many Skechers shoes also display the Skechers ‘S’ mark or Skechers’ name.” (A bit of a reality check for Skechers here: Most companies place their branding on the top of the tongue of sneakers. And also, while we are at it, is Brooks actually using the number 5 in a trademark capacity here? (I would argue that it is not.) And still yet, what does Brooks stand to gain from making consumers think its running shoes are affiliated with Skechers, a company that is not really known for running shoes?)
Not limited to a stateside fight, Skechers claims that “on or about April 26, 2022, it sought and obtained “a European Union-wide preliminary injunction from the Dusseldorf Regional Court in Germany, enjoining Brooks from importing, exporting, advertising, or selling any products with the infringing ‘5’ mark.” Specifically, the German court found that “there is a substantial likelihood of confusion between the Skechers ‘S’ marks and the infringing “5” mark, based on the ‘identity between the goods shoe’ and the ‘high degree of similarity between the signs, which are both characterized by a black filled-in sign that runs parallel horizontally in the upper and lower areas and has a right-hand curve in the lower right,’” Skechers states.
Brooks’ continued sale of sneakers bearing the stylized number 5 both in the U.S. and abroad is evidence of “its willful intent to infringe the ‘S’ marks and the Skechers mark notwithstanding the likely consumer confusion and harm to Skechers, Skechers’ reputation and goodwill,” the plaintiff argues.
With the foregoing in mind, Skechers claims that Brooks’ activities “have caused and, unless enjoined by this court, will continue to cause a likelihood of confusion and deception of members of the trade and public, and, additionally, injury to Skechers’ goodwill and reputation as symbolized by its exclusive use of the Skechers ‘S’ marks and the Skechers mark, for which Skechers has no adequate remedy at law,” and sets out claims of trademark infringement and dilution, and unfair competition. In addition to injunctive relief to bar Brooks from using the Skechers “S” marks on or in connection with Brooks’ goods and “passing off, palming off, or assisting in passing off or palming off Brooks’ goods as those of Skechers” (again, why would Brooks want to do that?), among other things, Skechers is seeking monetary damages, including exemplary and punitive damages in light to Brooks’ “willful and deliberate infringement and dilution of the ‘S’ marks.”
As I mentioned briefly above, it is not difficult to imagine Brooks successfully pushing back against the trademark infringement claim in Skechers’ lawsuit by arguing that it is not using the number 5 in a trademark capacity – or in other words, it is not using the number as an indicator of the source of the shoe but as an indicator of the model. (This is critical as in order for a party to infringe another’s mark it must be using the allegedly infringing mark in a trademark capacity.)
It is, of course, not unheard of for model numbers, including in the footwear space, to act as indicators of source. New Balance’s 574 model comes to mind, as Boston-based New Balance maintains trademark rights in – and at least one registration for – its use of the 574 mark. However, there appear to be some striking distinctions between Brooks’ “Levitate 5” model, for example, and New Balance’s 574 model. The most obvious distinctions (to me) are the purpose and the length of use (and the intended length of future use) of the 574 versus the use of the number 5 in connection with the Levitate 5 model. While New Balance has sold its 574 sneaker since 1988 and seemingly has no plan to stop doing so or to alter the design and retire the best-selling 574 shoe, Brooks’ Levitate 5 is merely the latest in a string of Levitate models – with Brooks’ Levitate, Levitate 2, 3, and 4 preceding it – and presumably, Levitate 6 to follow at some date in the future. (To be fair, New Balance does have a 575 sneaker, but the latter is not a replacement of a since-retired 574 style, as New Balance is still very much selling the arguably-more-famous 574 model.)
Given that the Brooks’ use of the number 5 appears to identify the current sneaker’s position in the lineup of Levitate models, as opposed to the source of the shoe, itself, it very well may be difficult to show that Brooks’ use is, in fact, trademark use in the same way as, say, Ew Balance’s 574 … or Chanel’s long-standing use of the number 5 on fragrances and cosmetics.
Barbara Barrilleaux, VP General Counsel at Brooks, told TFL on Friday in response to the Skechers lawsuit, “Brooks strongly denies these trademark claims as there is no infringement. We will vigorously defend our brand in this lawsuit.”
UPDATED (Sept. 15, 2022): The parties have settled the action, with the terms of the settlement remaining confidential.
The case is Skechers USA, Inc. v. Brooks Sports Inc., 2:22-cv-04436 (C.D. Cal.).
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