Image: Vans

Just two days after filing suit against Primark for allegedly copying its famous Old Skool skate shoe, Vans slapped Target with a similar lawsuit. The Southern California-based skate company is taking on the American big-box retailer for not only selling shoes that include “confusingly similar imitations of [Vans’] side stripe trademark” but the famed footwear brand claims that Target has gone to great lengths to mislead consumers into believing that Vans has either endorsed or is affiliated with the copycat footwear.

According to Vans’ complaint, which was filed in federal court in California last week, Target – “motivated not only by the extreme popularity of Vans’ Old Skool Shoe but by a desire to misappropriate Vans’ reputation and cachet to lend unwarranted and instant credibility to [its own product” – introduced its lookalike sneaker earlier this year.

Vans states that since the release of its Old Skool sneakers – complete with the trademark-protected side stripe design element – in 1977, it has sold “tens of millions of pairs of the Old Skool shoes” in the U.S. and the “side stripe trademark [with its] prominent placement and often-contrasted color make Vans’ shoes immediately recognizable to consumers even at far-off distances.”

With this in mind, Target’s sneaker “is a calculated and intentional infringement of Vans’ footwear products bearing the Vans trademarks and trade dress,” per Vans, “and has been designed to confuse the purchasing public as to source by deliberately incorporating the distinctive elements of the Vans trademarks and trade dress,” including the “side stripe” design and “additional features of the Old Skool Shoe … including the classic white-on-black color scheme and the overall shape and silhouette.”

But beyond the design of the shoe, itself, Vans claims that Target has carefully styled the shoe in its advertising materials to play on other elements of its brand. In particular, Target “further increases the likelihood that consumers will be confused by promoting and selling the infringing product alongside goods bearing a checkerboard pattern, which is a signature design element on many authentic Vans products.”

Much like the “side stripe” design, Vans says its “rich tradition of associating the Old Skool shoe and its other products with its signature checkerboard design” have made it so that “consumers encountering such a checkerboard design, especially when associated with footwear or accessories sold alongside footwear, are even more likely to associate the products with Vans.”

Target has also utilized a skateboarding theme in connection with its promotion of its lookalike sneaker, including in a promo video, in an effort to “trade on Vans’ history and its reputation for authenticity in skateboarding and street culture.”

image: Target

Still yet, Vans argues that Target has attempted to mislead consumers by including the infringing footwear in “search results for the term ‘women’s Vans shoes’ on the Target website,” which is likely to be particularly confusing for consumers given Target’s “established a reputation with consumers for developing collaborations with popular brands that include shoes, accessories, and clothing.” As a result, “consumers will likely make the mistaken assumption that the infringing [footwear] is, in fact, the result of a collaboration between Target and Vans.”

Vans claims that Target should be forced to immediately and permanently cease all marketing and sales of the allegedly infringing sneakers, and to pay a slew of damages for running afoul of both federal and state trademark and trade dress law. However, is Target legally in the wrong here?

The basis of the Vans’ suit is trademark law, under which the holder of a trademark (or trade dress) may prevent others from using his mark – or confusingly similar marks – on the same or similar types of goods. As such, the primary question here is: are the two trademarks at issue confusingly similar? This requires a consideration of the degree of similarity between the two trademarks at issue, among other things. This might be an uphill battle for Vans since the side stripes on the two styles of sneakers are of different shapes, and the appearance of the sneakers, themselves, varies quite a bit.

While it is clear, according to Vans, that consumers see some similarity between the shoes, it is also telling that they are able to distinguish between Vans’ shoes and Target’s. As Vans state in its complaint, “As a result of Target’s infringing footwear, consumers on Target’s own website have taken to referring to the infringing product as ‘fake Vans.’” Vans claims that this “clearly indicates an express association with, and a likelihood of confusion with, Vans’ products.”

However, instead of showing that are consumers likely to believe that Vans is in some way affiliated with or has authorized the making and selling of Target’s sneaker, consumers’ identification of Target’s sneakers as “fan Van” could show that consumers are able to see that Target’s sneakers are inspired by Vans (inspiration – as distinct from imitation – is legal) and as a result, are unlikely to believe that Vans is in some way affiliated with or has authorized the making and selling of Target’s sneaker.

*The case is Vans, Inc.; VF Outdoor, LLC, vs. Target Corporation ; Farylrobin, LLC,  8:18-cv-02258 (C.D.Cal.).