Image: adidas, Skechers

Less than a year after adidas and Skechers settled a trademark infringement suit over a Stan Smith-looking Skechers sneaker, the parties are back in court over a different Skechers sneaker. According to a complaint filed last week, Skechers has asked a federal court in Los Angeles County to declare that despite adidas’ claims of infringement, it is not running afoul of the notoriously litigious German sportswear giant’s 3-stripe trademark by way of its 4-stripe Goldie-Peaks shoe.

In the newly-filed suit, Skechers claims that adidas sent it two “infringement notice” letters late last year, claiming that its Goldie-Peaks Shoe “infringes and dilutes adidas’s” famous 3-stripe trademark. After sending Skechers an initial letter in November, adidas sent “a subsequent letter, dated December 20, 2018” repeating its demands” that Skechers cease all manufacturing, sales and marketing of the sneaker, and that it provide adidas with its sales data for the specific shoe so that adidas could “fashion an appropriate monetary demand.”

Adidas asserted in its letters that the “overall commercial impression” of the Goldie-Peaks shoe “is sufficiently similar to [its] 3-stripe” trademark-bearing shoes, and as a result, is likely to confuse consumers into believing that the Skechers shoe “is put out by, or with sponsorship or approval of, adidas.” Such confusion as to the source of a products is the central element in a trademark infringement claim.

Skechers – which maintains that the protection that adidas’ maintains in its 3-stripe mark is “narrow” since the footwear and apparel industries are a “crowded field of stripe designs” – argues that adidas’ trademark infringement (and dilution) claims are “baseless,” as consumers are not likely to believe its sneakers are in any way associated with adidas due to “especially significant … visual distinctions” between the stripes on the shoe at issue and adidas’ trademark.

In particular, Skechers notes that adidas “almost always” uses its 3 stripes in the same color, while Skechers and numerous other companies – such as Marc Jacobs, Miu Miu, Gucci, Paul Smith, DVF, Steve Madden, Tommy Hilfiger, and Tory Burch, among others – have produced “footwear featuring contrasting segments.”

image: Skechers’ complaint

Beyond that, Skechers argues that the fact that its sneakers include “prominent Skechers branding” on “multiple locations” makes it even more unlikely that the average consumers would be likely to believe that adidas is in some way affiliated with the Goldie-Peaks shoe.

With this in mind, Skechers is seeking court intervention “to protect its ability to lawfully conduct its business as a leading designer, developer and marketer of lifestyle and athletic footwear, without interference from adidas.” In particular, the California-based footwear brand has asked the court to declare that its sneakers are not infringing – or diluting – adidas’ striped mark, and as a result, adidas does not have a case.

This is the latest in a long list of cases that earned adidas something of a complicated reputation amongst its competitors and many intellectual property lawyers, alike, which have gone so far as to label the German sportswear giant a “bully” in connection with its quest to consistently push the envelope in terms of the breadth of its 3-stripe trademark protections.

While it is worth noting that trademark infringement does not only apply to instances when an exact trademark is replicated and likely to result in consumer confusion, it is also commonly cited when a “confusingly similar” trademark is used. For adidas, this has included the use of 2-stripe trademarks and 4-stripe trademarks on everything from sneakers (as we saw in the last adidas v. Skechers case) to fast fashion (Forever 21 filed a similar declaratory judgment action against adidas in 2017).

Counsel for adidas has told TFL in the past that it is “vigorously protecting [its] rights,” and that it will, in fact, “continue to take action in case of infringements.”

* The case is Skechers USA, Inc. v. Adidas AG, AND ADIDAS AMERICA, INC., 2:19-cv-00812 (C.D.Cal).