An almost decade-long fight between Nike and adidas has spilled over into a proceeding before the International Trade Commission (“ITC”), with Nike asking the federal trade body to block the import of adidas’ Primeknit footwear on the basis that the sneaker tech infringes a number of its utility patents. In the complaint that it filed with the ITC on Wednesday, Nike alleges that adidas is violating Section 337 of the Tariff Act of 1930 by importing sneakers that infringe upon its rights in the “game-changing” Flyknit tech and the “novel method of designing and manufacturing uppers that enables Nike to create footwear that excels in performance, design, and aesthetics, while reducing materials and waste.”

Setting the stage in its complaint, Nike asserts that it is in the business of “investing heavily in research, design, and development” in order to create novel “technologies and products that enhance athletic performance, reduce injury, and maximize comfort all while reducing waste.” Among such boundary-breaking developments is its Flyknit, which Nike says is “a culmination of more than a decade of research and development,” and the result of Nike spending a substantial (and redacted) sum of money.

Unlike itself, Nike claims that “adidas AG, adidas North America, Inc., and adidas America, Inc. (collectively, ‘Respondents’ or ‘adidas’) have forgone independent innovation,” and instead, have “spent much of the past decade challenging several of Nike’s patents directed to Flyknit technology.” Nike’s relevant patents in the ITC matter are 9,918,511; 9,743,705; 8,266,749; 7,814,598; 9,060,562; and 8,898,932, which generally relate to “specific aspects of knitted textile uppers;” “knitted uppers that have an integral tongue that is formed as part of the knitted upper;” and “an upper with a knitted component and a skin layer secured to the knitted component.”

Such challenges, Nike alleges, include “unsuccessful petitions at the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board that targeted two of Nike’s patents at issue in this case,” and subsequent appeals to the U.S. Court of Appeals for the Federal Circuit and the Supreme Court, in which Nike claims that adidas also came up short.

A selection of the allegedly infringing adidas’ sneakers

All the while, as adidas was “unsuccessfully challenging” the Flyknit patents, the German sportswear giant “continued to use Nike’s patented technology without permission,” Nike claims. The result, according to the Beaverton, Oregon-based behemoth? “Today, adidas offers dozens of footwear products that infringing Nike’s patents,” including by way of its “many so-called Primekit shoes.” 

With the foregoing in mind, Nike claims that it is “forced to bring this action to defend its investments in innovation and to protect its technology by halting adidas’ unauthorized use.” Specifically, Nike has requested that the ITC institute an investigation into adidas’ alleged violations of section 337 of the Tariff Act, namely, its “unlawful and unauthorized importation into the U.S.” and subsequent sale of “certain knitted footwear products that infringe Nike’s patents protecting its Flyknit technology.” Nike is also seeking a limited exclusion order and cease and desist orders against adidas in connection with certain footwear products that allegedly infringe the aforementioned patents.

Section 377 provides for the investigation of unfair acts in connection with the importation of articles into the U.S., with the primary remedy for violations being an exclusion order that prevents the goods at issue from entering in the U.S. The Washington, DC-based ITC’s power to grant broad exclusion orders, which serve as a powerful remedy to prohibit the entry into the U.S. of infringing articles, has made it an increasingly popular forum to handle intellectual property disputes for both U.S. companies and foreign companies with a U.S. presence. 

Allegedly infringing adidas sneakers

Beyond that, the “uniquely fast and compressed nature of an ITC Section 337 investigation” makes it an attractive forum for companies to enforce their rights, per Squire Patton Boggs attorneys Adam Hess and David Prueter. “Unlike district court litigation, which can take several years to reach a trial date, a case filed before the ITC can proceed to an evidentiary hearing before an administrative law judge in eight to nine months.”

The ITC complaint is part of a larger fight that has pitted Nike against adidas over the two companies’ respective knitted footwear, a long-running clash got its start in the immediate wake of the London Olympics in 2012. Leading up to the Olympics, Nike and adidas released their first knitted running shoes: Nike announced the debut of its Flyknit shoe in February 2012, while adidas unveiled its knitted footwear the following July, hailing the product as “a first-of-its-kind running shoe.” 

The clash has taken the form of a Nike-initiated lawsuit in adidas’ native Germany, as well as an array of inter partes reviews (i.e., proceeding to invalidate already-issued patents) before the Patent Trial and Appeal Board and challenges before the U.S. Court of Appeals for the Federal Circuit. Nike has argued throughout the respective rounds of the knit-centric battle that it “has a strong heritage of innovation and leadership in footwear design and development,” and that its patents are “the foundation of that leadership, and we protect them vigorously.” Meanwhile, adidas has consistently and “vigorously” denied allegations of patent infringement, asserting that its Primeknit technology is the direct result of “years of dedicated research.”

The case is In the Matter of CERTAIN KNITTED FOOTWEAR, 337-3580, U.S. International Trade Commission.

Lululemon has responded to Peloton’s declaratory judgment action with a counter suit, arguing that the New York-based exercise bike-maker is on the hook for design patent and trade dress infringement in connection with its sale of “copycat” athleticwear on the heels of pulling the plug on the parties’ 5-year-long co-branding partnership. According to the complaint that it filed in a California federal court on Monday, Lululemon claims that “unlike innovators such as [itself],” when Peloton opted to launch its own collection of apparel, it “did not spend the time, effort, and expense to create an original product line, [and] instead, Peloton imitated several of lululemon’s innovative designs and sold knock-offs of lululemon’s products, claiming them as its own.” 

In the newly-filed complaint, much of which mirrors the cease-and-desist letter than it sent to Peloton on November 11, Lululemon alleges that Peloton’s Strappy Bra, Cadent Laser Dot Legging, Cadent Laser Dot Bra, High Neck Bra, and Cadent Peak Bra collectively infringe six different Lululemon design patents. Beyond that, Lululemon claims that Peloton’s One Lux legging is “another imitation of a lululemon product, as it copies the trade dress of lululemon’s Align part, which is one of [its] all-time best-selling products.” 

Reflecting on the unregistered Align trade dress, which it rather vaguely describes as including but not limited to “a pair of tight athleisure pants having a waistband and stitching,” Lululemon argues that because the trade dress – a type of trademark protection that extends to the configuration (design and shape) of a product or its packaging – has “established strong secondary meaning and extensive goodwill,” the general public “has come to recognize and identify pants bearing the Align Trade Dress as emanating from lululemon.” In other words, Lululemon claims the configuration of the pants, which is not functional and for which there are “numerous alternative shapes and designs,” have come to act as an indicator of source for its brand.

As such, Lululemon claims that Peloton’s use of the Align trade dress “in connection with products identical to lululemon’s products and sold to the same customers through overlapping channels of trade is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association [between itself and] lululemon.”

Peloton has, of course, already pushed back against this claim in a trademark capacity in its suit (pretty convincingly, I would argue), asserting that because both companies’ well-known branding appears – in some cases, quite prominently – on their respective offerings, consumers are not likely to be confused at all. (This point could also be relevant from a design patent infringement perspective in light of the Federal Circuit’s holding in the Columbia Sportswear v. Seirus case, which “suggests that logo placement can be an important factor in assessing design patent infringement, particularly when the logo is an integral part of the accused design. In light of this, an infringer could potentially avoid infringement through logo placement on the allegedly infringing design.”)

As for its design patent infringement claims (at least some of which appear to be somewhat weak in light of differences between the elements specified in the Lululemon patents and the actual Peloton designs), Lululemon alleges that Peloton has infringed its D709,668; D759,942; D798,539; D836,291; D903,233; and D923,914 patents, which extend to the ornamental elements of a number of sports bras and one that protects elements of its Cadent Laser Point leggings. (Note: design patents are distinct from utility patents, as they protect the overall visual appearance of an article of manufacture, whereas utility patents provide protection for the functional aspects of an article, such as the way an article works and is used.) Lululemon argues that Peloton “has, and continues to, knowingly, intentionally, and willfully infringe” its patents by making, using, selling, offering for sale, and/or importing products having a design that is substantially similar to the claimed design” embodied in those patents. 

Pointing to Peloton’s Strappy Bra, for instance, Lululemon contends that “in the eye of an ordinary observer, giving such attention as a purchaser usually gives” – which is the standard for determining design patent infringement – “the design of Defendant’s Strappy Bra is substantially similar to the claimed designs of each of the D668 and D942 patents … because the resemblance is such as to deceive such an observer inducing them to purchase one supposing it to be the other.” 

In addition to design patent and trade dress infringement, Lululemon also sets out claims of false designation of origin and unfair competition under California Business & Professions Code, and is seeking preliminary and permanent injunctive relief and monetary damages. The company is also seemingly seeking to have a say in the venue where the cases – which will almost certainly be combined into one proceeding given that they are based on the same facts and involve the same parties – will be heard.

While Peloton filed suit in the Southern District of New York last week, Lululemon has since initiated its case in the Central District of California. Per Lululemon, by filing suit in New York, Peloton has attempted to “improperly wrestle away Lululemon’s choice of forum.” Specifically, Lululemon asserts that after receiving its cease-and-desist letter earlier this month, Peloton requested “more time” to respond to Lululemon’s demands, which Lululemon says that it granted “as a good corporate citizen and out of consideration for the request of a former partner.” However, since Peloton opted to file its declaratory judgment matter “instead of substantively responding to Lululemon’s letter,” Lululemon argues that “it is not clear that Peloton’s request for an extension was not made in good faith” and was actually just a play for venue.

And one final thought on Lululemon’s complaint, it is worth noting the potential that trade secret claims to come into the mix. In the cease-and-desist letter that it sent to Peloton, Lululemon hinted at trade secret misappropriation claims (the relevant language is below), but does not actually include such claims in its complaint.

A Larger Legal History for Lululemon

The now-rival lawsuits are not without history, either for the Lululemon brand or for the sportswear/activewear industry more generally. While the fashion industry sees its fair share of lawsuits, the footwear and sportswear markets tend to be particularly rife with design-specific litigation and other legal conflicts (oftentimes much more so than its fashion counterparts) for a number of reasons. 

High on that list is the fact that sportswear/activewear giants like Nike, adidas, Lululemon, etc., routinely invest large sums and years of time in the research and development that goes into their offerings, both from a technical perspective but also in terms of appearance elements. The level of R&D that goes into making things like sneakers and even sports bras gives rise to incentives for brands to “defend [those investments] in innovation” (and thereby, recoup their R&D expenditures), as Nike put it in the design patent infringement lawsuit that it filed against Puma 2018, in which it accused Puma of “forgoing independent innovation and instead, using Nike’s technologies without permission.” It also motivates brands “to protect [their] technologies.” 

At the same time, brands appear to be increasingly eager to clamp down on perceived copycat products by way of infringement lawsuits – including ones that center on design patents, which give brands grounds to take legal action when their products or even just individual, protected elements of the products are copied – as competition heats up in the activewear market, which is expected to reach $439.17 billion by 2026, up from roughly $353.5 billion in 2020.

Lululemon is no stranger to litigation stemming from the dozens of design patents that it maintains. The activewear company has been embroiled in a number of high-profile design patent infringement lawsuits over the past decade or so, including with Calvin Klein, Inc., Hanesbrands, and Under Armour, in which similar defensive “obviousness” arguments have been made in connection with Lululemon’s arsenal of design patents. “What Lululemon is doing here is staking its turf,” Jeremy de Beer, a law professor at the University of Ottawa, said back in 2017 when Lululemon named Under Armour in a since-settled suit for design patent infringement. “The business strategy is to deter other people from even trying to copy designs, because it is going to cause them legal problems.” 

The same approach is still seemingly being applied by players across the sportswear/activewear industry, all of which maintain robust arsenals of design patents (and in many cases, utility patents, as well) in order to aggressively protect their products against copycats – and maybe more importantly, to protect their position in the market from competitors.

The case is Lululemon Athletica Canada, Inc. v. Peloton Interactive, Inc., 2:21-cv-09252 (C.D.Cal.)

A behind the scenes scuffle between Lululemon and Peloton has spilled over into federal court, with the exercise bike -maker arguing that Lululemon recently threatened it with litigation over its “similarly striking” garments. According to the declaratory judgment action that it filed with the U.S. District Court for the Southern District of New York on November 24, Peloton claims that just over two months after it launched an activewear collection of its own and terminated its 5-year apparel partnership with Lululemon, the Vancouver-based athleticwear company has alleged that a handful of Peloton’s private label products infringe its design patents, and that a pair of Peloton-branded leggings infringes its trade dress rights. 

Setting the stage in its complaint, Peloton asserts that “in addition to being the world’s leading interactive fitness platform, [it] has its own private label apparel brand, Peloton Apparel.” While the New York-based company claims that it first began selling apparel from other brands to its exercise equipment members in 2014, “in response to member demand, it officially launched its private label line in September 2021.”

Ahead of launching its own in-house collection, Peloton claims that it ended its existing partnership with Lululemon. “At the time, the termination of the Peloton-Lululemon co-branding relationship” – which saw Peloton sell a variety of Lululemon apparel products co-branded with its own name/logo – “was amicable,” Peloton asserts, noting that Lululemon “did not object in any way to Peloton’s termination decision or Peloton’s offering of its own active wear apparel.” 

That changed earlier this month, however, according Peloton, as it says that it received a cease-and-desist letter from Lululemon on November 11, in which Lululemon alleged that five of Peloton’s branded and private label activewear apparel products – namely, Peloton’s Strappy Bra, High Neck Bra, Cadent Peak Bra, and Cadent Laser Dot Bra – infringe its design patents, and that another one of the Peloton-branded activewear apparel products – the Cadent Laser Dot Leggings – infringe its trade dress rights

In the November 11 cease-and-desist letter, Peloton claims that counsel for Lululemon stated that unless Peloton cease selling the allegedly infringing products, it would file an infringement lawsuit. 

Instead of complying with Lululemon’s demands, Peloton filed a declaratory judgment action, asking a court to settle the matter by way of a declaration that: “(1) Peloton has not infringed, and does not infringe upon the asserted Lululemon patents; (2) the asserted Lululemon patents are invalid; and/or (3) Peloton has not infringed, and does not infringe, upon any purported Lululemon trade dress rights.” (When a party is threatened with a design patent infringement lawsuit (or another type of infringement suit), it may preemptively sue the rights holder, Lululemon in this case, in a declaratory judgment action and seek to have the allegedly infringed design patent declared invalid or not infringed.)

Peloton’s Patent Pushback

First addressing Lululemon’s patent infringement claims, Peloton argues that the company’s allegations “lack any merit,” as “even a quick comparison of the Lululemon patented designs with the allegedly infringing Peloton products reveals numerous clear and obvious differences that allow the products to be easily distinguished.” Beyond that, even if the products are sufficiently similar, Peloton asserts that Lululemon’s “claimed design patents are invalid because, at a minimum, they are anticipated and/or obvious and, thus, cannot be infringed upon.”

It is worth specifying here that Lululemon is claiming design patent rights – i.e., rights that protect the overall visual appearance of an article of manufacture, including the color and shape of a product or a combination thereof – in the specific “ornamental design” of its apparel products. Here that takes the form of the design elements of various sports bras and a pair of leggings. Essentially, it is arguing protection in the way those things look, as distinct from the way they work, the latter of which falls in the realm of utility patents. 

Pushing back against Lululemon’s infringement claims, Peloton sheds light on some of the limitations of design patents, primarily, that protection exists only for new designs, or more specifically, novel and non-obvious ones. Here, Peloton claims that various prior art – including previously-released designs from Sweaty Betty, among other companies – makes it so that the sports bra and leggings design elements were already “anticipated or would have been obvious” at the time that Lululemon filed its patent applications. As a result, Peloton claims that has noted infringed Lululemon’s sports bra patents and that Lululemon’s patents are invalid due to a lack of novelty and/or non-obviousness, and thus, “cannot be infringed upon.”

Aside from taking issue with the validity of the patents that Lululemon relies upon to make its threatened case, Peloton asserts that the court should issue a declaration in its favor because there are “clear and obvious differences” between its sportswear garments and Lululemon’s patented designs. 

Citing some of the “key differences” between its Cadent Laser Dot bra and the ornamental design at the center of Lululemon’s D836,291 patent, Peloton argues that the ’291 patent “claims a translucent, transparent, or see-through mesh or fabric, whereas the dotted pattern on [its] Cadent Laser Dot Bra is a pattern cut into the fabric of the bra itself.” Moreover, “The shape of the insert claimed in the ’291 patent is also different from that of [its] product,” per Peloton, as the ’291 patent “shows a triangle with two rounded sides,” whereas its “unique dotted pattern is more similar to a Christmas tree shape.” 

These differences, among others, are noteworthy, as the successful enforcement of a design patent requires that an “ordinary observer” – with knowledge of the prior art and “giving such attention as a purchaser usually gives” – would find the accused product and the patented design to appear to be “substantially the same.” 

(Since the Federal Circuit decided the Egyptian Goddess, Inc. v. Swisa, Inc. case in 2008, the sole test for determining whether a design patent has been infringed is the ordinary observer test. The caveat here is that only non-functional elements and ornamental aspects of functional elements can be considered as part of the “ordinary observer” analysis, and thus, if the differences between these points of novelty and the accused design “are such that the overall design of the patented and accused product are not substantially the same, a finding of infringement is inappropriate.”)

While Peloton does not make functionality claims in its complaint, it does argue that “clear differences” between its products and those depicted in Lululemon’s patents stand in the way of an ordinary observer finding that the respective designs are similar enough to amount to infringement. Still yet, what Peloton does not explicitly argue – but what is, nonetheless, worth noting – is that the breadth of Lululemon’s hypothetical patent infringement claims (i.e., the ones that it makes in its cease-and-desist letter) is confined to the actually-claimed designs that are depicted in its patent drawings and does not extend to general design concepts, such as a sports bra. The Federal Circuit has repeatedly held this, stating that the scope of a patent is limited to the “overall ornamental visual impression, rather than to the broader general design concept.”

As such, differences in the appearance of Peloton’s offerings and the designs shown in Lululemon’s patents are significant.

On the Trademark Front

In its complaint, Peloton also shoots down Lululemon’s trademark claim, asserting that its rival fails when it comes to likelihood of confusion, which is the critical element for determining infringement in a trademark context. In addition to “numerous clear and obvious differences in design,” confusion between the two companies’ products is “a virtual impossibility,” it argues, as “[its] and Lululemon’s brands and logos are also distinctive and well-recognized” – and clearly depicted on the companies’ respective products. 

At issue is Lululemon’s Align trade dress, which it claims that Peloton has infringed by selling the Peloton One Luxe Tights. On this front, Peloton takes issue with the Align trade dress, itself, arguing that Lululemon lacks rights in the configuration, as “the features of the Align pant are ornamental and fail to function as a source identifier.” In case they are not ornamental, Peloton claims that Lululemon still does not maintain rights in the design of the Align pants, as the elements that it consists of “(i) are not distinctive such that they may function as a source identifier, and (ii) have not acquired distinctiveness and/or secondary meaning so that they may function as a source identifier.”

(The acquired distinctiveness part is important, as the Supreme Court previously established that a product design can never be inherently distinctive. As such, in order for product design trade dress to be protectable, the purported trade dress holder must establish that it has acquired secondary meaning.)

And still yet, Peloton asserts that even if Lululemon’s purported Align trade dress was protectable, its One Luxe leggings do not infringe that trade dress because consumers are not likely to be confused, as its branding appears on its leggings and the same is true for Lululemon. (This point could also be relevant from a design patent infringement perspective in light of the Federal Circuit’s holding in the Columbia Sportswear v. Seirus case, which “suggests that logo placement can be an important factor in assessing design patent infringement, particularly when the logo is an integral part of the accused design. In light of this, an infringer could potentially avoid infringement through logo placement on the allegedly infringing design.”)

With the foregoing in mind, Peloton is seeking a declaration from the court that it has not infringed Lululemon’s design patents or its trade dress, as well as declarations that the patents and trade dress are in valid and unenforceable. Peloton is also seeking reasonable attorneys’ fees and costs, and “any other relief the Court may consider equitable, just, and proper.”

In a statement on Friday, a representative for Lululemon said in connection with the newly-filed case, “At Lululemon we are known for our product innovation and iconic design. We will defend our proprietary rights to protect the integrity of our brand and to safeguard our intellectual property.”

The case is Peloton Interactive, Inc. v. Lululemon Athletica Canada Inc., 1:21-cv-10071 (SDNY).

In the $62.5 billion-plus global sneaker market, the competition is fierce, the costs associated with the intensive research and development that goes into designing and manufacturing footwear are high, and the revenues that can be generated from single styles can race past the $1 billion mark for standouts like the Nike Flyknits styles or adidas’ Stan Smith and the Superstar models. This means that the stakes are high amongst the market’s key players, and the chance that litigation will come into play among them is even higher.

Nike and adidas have long made headlines in connection with their history of legal battles, centering on their respective knitted technologies, for instance, which spawned an international battle beginning at the very same time as he London Olympics in 2012, and while there is likely no end in sight to the fights they wage against one another in their quest to outfit consumers across the globe, another rivalry has been spilling over into the courts: Nike versus Skechers.

In the lawsuit that it filed against Skechers in a federal court in California in September, Nike told the judge that the case was not the first of its kind, just as it was “not the first time Skechers has infringed its intellectual property rights.” Accusing Skechers of copying a number of its sneaker designs and thereby, infringing two of its utility patents, counsel for Nike declared that the case is actually “the fourth in a series of lawsuits that Nike, and its subsidiary Converse Inc., have filed against Skechers asserting a range of intellectual property rights.”

In filing suit against Skechers this fall, Nike has escalated another relatively recently-initiated fight against its Southern California-based rival, and added yet another matter to a larger – and clearly still growing – list of proceedings that Nike has said stem from Skechers’ larger pattern of allegedly “copying its competitors’ designs and using innovative technologies developed by others to gain market share instead of innovating its own designs and technologies.”

In Skechers’ mind, Nike’s latest litigation was the latest attempt by the $150 billion-plus sportswear giant to “stifle competition” and “bully” its rivals. This is what Skechers asserted in an open letter that it posted to social media in the fall of 2019.

A timeline of their respective lawsuits – and other legal proceedings – is as follows …

October 2014: Converse v. Skechers

Nike-owned Converse sued Skechers (and 30 or so other companies, including New Balance, Walmart and Ralph Lauren, among others, in individual cases) in federal court in Brooklyn, New York – in which it sought injunctive relief and monetary damages – and in an International Trade Commission (“ITC”) proceeding, seeking an order barring the defendants from importing the allegedly infringing footwear into the U.S.

In both sets of cases, Converse alleged that the more than 2 dozen companies, including Skechers, were “mass-producing, distributing or selling sneakers that knock off the look of [its] iconic Chuck Taylor,” thereby running afoul of its trademark rights. As for Skechers, adidas claimed that the company’s Twinkle Toes and BOBS designs infringed its trademark – or more specifically, its trade dress – rights in various elements that make up the design of its famed Chuck Taylor sneakers, from its “distinctive” toe caps and toe bumpers to its striped midsoles.

While the majority of the footwear companies on the opposite end of adidas’ civil suits and the ITC proceeding have settled quietly, the matters against Skechers are still underway.

The case is Converse, Inc. v. Skechers U.S.A., Inc., 1:14-cv-05977 (E.D.N.Y.)

January 2016: Nike v. Skechers

Nike Skechers sneakers
Nike knitted sneaker (left) & Skechers knitted sneaker (right)

In the patent infringement suit that it filed in federal court in Portland, Oregon in early 2016, Nike asserted that a number of Skechers’ footwear – including its “Burst, Women’s Flex Appeal, Men’s Flex Advantage, Girl’s Skech Appeal, and Boy’s Flex Advantage” shoe styles – infringe at least eight of its Flyknit-specific design patents given that the “overall appearance of the designs of the Nike patents and the corresponding designs of Skechers’ infringing shoes are substantially the same.”

According to its 14-page complaint, which was supplemented with nearly 200 pages of exhibits, counsel for Nike alleged that “Skechers intended to copy the designs covered by [its] patents” and did so to the point that “an ordinary observer would will perceive” the design of the two parties’ respective shoes to be the same. To prove its point, Nike cited an article from menswear site Complex, which “describes the Skechers’ Burst shoes as having ‘ripped off’ Nike’s ‘Flyknit’ design.’”

That case, which was transferred from a federal district court in Oregon to the U.S. District Court for the Central District of California in November 2017, is still underway, with Skechers filing its answer, as well as counterclaims of its own, early this year, asking the court to declare that it did not infringe Nike’s patents, and to declare that 12 of Nike’s patents are invalid “for failing to comply with the patent law provisions” of the Patent Act.

The case is Nike, Inc. v. Skechers U.S.A., Inc., 2:17-cv-08509 (C.D. Cal.).

April and May 2016: Skechers IPRs

In the wake of Nike’s design patent infringement lawsuit, Skechers retaliated against the Beaverton-based sportswear giant by filing inter partes review (“IPR”) petitions with the U.S. Patent Trial and Appeal Board (“PTAB”) in order to invalidate the eight design patents that Nike claims Skechers infringed in the aforementioned lawsuit. The basis for these filings? The individual patents do not meet the requirements for patentability (i.e., the inventions are not novel and/or non-obviousness).

In September and November 2016, the PTAB – which has the ability to refuse to institute an IPR proceeding if it finds that the challenger’s request lacks substantive merit – denied each of Skechers petitions, including one that pointed to Italian fashion brand Missoni’s zig-zag print designs, which date back to the 1950s, as existing long before Nike created its Flyknit designs and filed its corresponding patent applications, making it so that Nike’s knit-centric creations are not all that novel. (Novelty is a critical requirement for patent protection).

January 2017: Skechers IPRs

Skechers filed several additional IPR petitions, including ones challenging Nike’s design patent-protected knitted “shoe uppers.” This time around, while the PTAB again refused the majority of Skechers’ petitions, it agreed to consider two of them, both of focused on the validity of Nike’s design patents for sneaker soles (D723,781 and D723,783). Skechers claimed that the two “shoe sole” patents were invalid because they were “obvious” as a result of Nike’s own prior filings, including a European Community Design registration and two previously-filed utility patent applications. In June 2018, a 3-judge panel for the PTAB rejected Skechers invalidity challenges and upheld the validity of Nike’s patents.

September 2019: Nike v. Skechers

Nike Skechers sneakers
image via complaint

In a design patent infringement complaint filed in the fall, Nike upped the ante on the parties’ existing fight, and called foul on Skechers’ continued practice of allegedly manufacturing “Skecherized versions” of Nike sneakers, including blatant replicas of its VaporMax and Air Max 270 designs, paying specific attention to its rival’s alleged hijacking of its Air Sole technology, which Nike says that it spent decades creating.

According to its 37-page complaint, which was filed on September 30 in the U.S. District Court for the Central District of California, Nike alleges that in selling its Skech-Air Atlas, Skech-Air 92, Skech-Air Stratus, and the Skech-Air Blast models, among others, Skechers has “made, used, offered for sale, sold, and/or imported into the U.S.” shoes that have “the same overall appearance [as those protected by its] VaporMax patents,” and that infringe the some of the patents it holds for its Air Max 270 designs.

Skechers’ allegedly infringing sneakers “are substantially the same” as Nike’s patent-protected sneakers, the footwear titan asserts, so much so that “an ordinary observer will perceive the overall appearance of … the VaporMax [and the Air Max 270] shoes and the corresponding designs of the [Skechers] shoes” to be virtually the same.

In its January 7, 2020 response to Nike’s suit, Skechers denies that it has infringed Nike’s patents and asserts that even if it did, Nike’s patents are invalid, and thus, unenforceable. In counterclaims of its own, Skechers is seeking a formal judgment from the court declaring that the patents that Nike cites in its complaint are invalid and that it has not infringed the patents at issue.

The case is Nike, Inc. v. Skechers U.S.A., Inc., 2:19-cv-08418 (C.D.Cal.)

October 2019: Nike v. Skechers

In a separate patent lawsuit that it filed against Skechers just weeks later, Nike claims that Skechers is also on the hook for infringing two of its utility patents. According to Nike, Skechers’ Skech-Air Jumpin’ Dots and Skech-Air Mega shoes infringe claims contained in two of its utility patents – one that protects “an article of footwear” with an emphasis on the cushioning cavity that exists in the midsole of the shoe (Patent No. 10,098,412), and another that covers the “sole component [of a sneaker] and a method of manufacturing the sole component” (Patent No. 7,401,420).

“Without Nike’s authorization, Skechers has made, used, offered for sale, sold, and/or imported into the U.S.” shoes that infringe a number of claims protected by the 412 and 420 patents, according to Nike, as they include the same “sole structure incorporating a fluid-filled bladder and a reinforcing structure secured to the bladder,” “a cavity disposed between the upper and the outsole,” and a “plurality of protrusions [that] progressively decrease in height from the first protrusion to the forward-most edge of the article of footwear,” among other things.

The case is Nike, Inc. v. Skechers U.S.A., Inc., 2:19-cv-09230 (C.D.Cal.)

UPDATED (Nov. 30, 2021): On the heels of mediation, Nike and Skechers jointly to dismiss three cases (2:19-cv-09230, 2:17-cv-08509, and 2:17-cv-08509).

*This article was initially published in January 24, 2020.

Riding a striking wave of demand that intensified amid the COVID-19 pandemic, consumer desire for Crocs is “stronger than ever” on a global basis, according to the Bloomfield, Colorado-based company’s CEO Andrew Rees. First quarter revenues for the foam clog-maker grew by 64 percent to $460.1 million up from $281.2 million a year earlier, topping analyst expectations of $415 million for the 3-month period. The recurring rise in demand for Crocs helped the brand to achieve “record revenues and profitability, with growth in all regions and all channels” for Q1, with more growth expected for the rest of the year. At the same time, the widespread embrace of Crocs bringing with it a slew of copycat products, which the footwear brand is looking to stop. 

In the complaint that it filed with the U.S. International Trade Commission on June 8, Crocs claims that two dozen companies – from Skechers to Loeffler Randall – are engaging in the unlawful importation and sale of “certain footwear products and packaging that violate registered trademarks used in connection with certain Crocs shoes,” including Crocs’ registered trademark rights in its “CROCS” word mark, as well as “the three-dimensional configuration of the outside of an upper of a shoe, the textured strip on the heal of the shoe, the decorative band along the length of the heel strap.”

As Crocs asserts in its 175-page complaint, since it launched in 2002, it “has sold nearly 800 million pairs of shoes in over 90 countries, and garnered widespread recognition of its comfort-driven, revolutionary footwear, making [it] one of the ten largest non-athletic footwear brands in the world.” While the “iconic Classic Clog was conceptualized during a sailing trip and originally presented to consumers as a boat shoe, soon after, it became apparent that the shoe appealed to consumers of all demographics seeking fun and friendly, comfortable footwear,” and by 2005, the classic Crocs design “had become recognized as a new standard-bearer in the fashion footwear, professional footwear, and casual lifestyle footwear markets.”  

Addressing the well-established presence of its footwear across the globe, Crocs points to collaborations with the likes of “modern pop artists, [such as] Justin Bieber and Post Malone, Los Angeles high-fashion apparel brands Pleasures and Chinatown Market, the luxury department store Barney’s New York, and fast-food chain KFC,” and famous fans that range from Jack Nicholson and Whoopi Goldberg to Shia LaBeouf and Jennifer Garner. At the same time, Crocs claims that the “unusual and distinctive appearance” of its clog-style shoe “is, itself, responsible for generating much of the publicity that [the company] receives,” having caused “an uproar in the fashion footwear world [and] making the classic Crocs shoe a source of unending debate.” 

The hype surrounding the footwear brand’s offerings is so great that Crocs alleges that “the Classic Clog garnered nearly 25 billion observed media impressions in 2020, alone.”

With the foregoing in mind, and as a result of its consistent use of its trademarks over the course of two decades, including the “one-of-a-kind ornamental design characteristics that give the overall impression of a fun and distinctively quirky clog-like shoe,” Crocs claims that its marks have become “widely recognized by the general consuming public of the U.S. as a designation of source of the footwear products that are manufactured, sold, distributed, and promoted Crocs.”

While there are “virtually infinite number of different, non-infringing footwear styles in existence today,” and the lack “any actual competitive need to use the Crocs marks in commerce,” Crocs claims that a number of competitors have taken to “intentionally and frequently” replicating its “unique and recognizable” footwear, “not due to competitive need, but because of the significant goodwill that the Crocs marks have accumulated over the past two decades during their use by Crocs.” 

In light of its “keen interest in protecting [its trademarks] from the kind of confusion and dilution that occurs from the unlicensed use of its marks by knockoffs that are labeled with the name of the knockoff’s manufacturer,” Crocs claims that it goes to great lengths to fend off copycats and ensure that consumers are not misled about the source of lookalike products. For instance, Crocs asserts that it strictly limits its licensing deals. In fact, the company claims that it has only licensed the trademark for the design of its classic clog on one occasion: in connection with a “licensing partnership” with Balenciaga in 2017, which was a “smashing success,” with the $850 platform Crocs selling out “during pre-release before they were even officially available for purchase.” Beyond that, Crocs asserts that the “scale” at which its marks are infringed “requires constant attention,” and as a result, “each year, customs and other enforcement officials around the world seize hundreds of thousands of shoes that improperly bear” its trademarks. 

“The protection of Crocs’ trademarks is essential to continuing the company’s mission to make the world a more comfortable and happier place, one pair of shoes at a time,” the company claims, and against that background, Crocs points to the various individual respondents, all of which have either made use of the “Crocs” name in connection with their own lookalike – but unaffiliated – products and/or made and sold footwear that is “overwhelming similar” to Crocs’ trademark-protected classic clog design without Crocs’ authorization, thereby, giving rise to its claims of trademark infringement and dilution.  

As a result of such widespread “intentional” infringement, which is likely to confuse consumers as to the source of the unauthorized products, and which will “continue to cause substantial injury to Crocs, including at least substantial injury to the goodwill and reputation for quality associated with [its trademarks],” Crocs is seeking a General Exclusion Order to exclude from entry into the U.S. “all imported shoes that violate Crocs rights in [its] asserted trademarks.” More than that, Crocs is also seeking cease-and-desist orders directing the respondents “to halt the importation, marketing, advertising, demonstrating, warehousing of inventory for distribution, sale, and use of imported articles in the U.S.” 

In a statement in connection with the filing, Crocs notes that the proceeding follows from a 2006 matter that it initiated with the International Trade Commission (“ITC”) “relating to its design and utility patent rights for the Crocs Classic Clog,” and in which Crocs sought – and the ITC issued – a general exclusion order barring the importation of products infringing its patent rights. Speaking to the case at hand, CEO Andrew Rees said that “by blocking the importation and sale of trademark-infringing footwear, we can ensure with confidence that our product DNA is fully protected while continuing to provide an authentically Crocs experience to our customers and consumers”

The case is In the Matter of Certain: Casual Footwear and Packaging Thereof, 3551 (ITC).