Federal judge in Oregon bars Skechers from selling three shoes similar to Adidas
Oregon's U.S. District Judge Marco A. Hernandez this month issued a preliminary injunction against Skechers, the second largest footwear company behind Nike, according to court records. Adidas had sought the injunction, pending the final outcome of a trial.
Skechers plans to appeal.
The three Adidas trademarks in contention are its familiar "three-stripe'' logo on athletic shoes, its distinctive Stan Smith white tennis sneaker and its "Supernova'' design.
In a trademark infringement lawsuit filed in September in federal court in Portland, Adidas alleged Skechers was selling footwear "in a blatant, bad faith attempt to trade on Adidas' goodwill and to profit wrongfully from consumer's confusion.'' Adidas' North American headquarters is based in Portland.
Hernandez agreed in a 41-page opinion.
Adidas contended that Skechers' Relaxed Fit Cross Court TR was a "knock off'' of its three-stripe trademark, that Skechers' Relaxed Fit Supernova shoe stole from Adidas' Supernova mark and that Skechers' Onix infringed on Adidas' Stan Smith shoe.
Adidas began using its three-stripe logo on athletic shoes sold in the United States in the 1950s. It has changed slightly over the years but has become well-known on and off the playing field -- splashed across athletes' gear in the World Cup, Boston Marathon and other big events and worn by top athletes including Portland Trail Blazers' Damian Lillard and other luminaries like pop star Katy Perry, the judge noted in his ruling.
Adidas spends $38 million annually in international promotions and advertising, with annual sales of three-stripe merchandise running into hundreds of millions, according to court documents.
Skechers pointed to minor differences in its three-stripe shoe – noting its stripes are of unequal thickness with rounded corners and combine at one point to form a sideways letter "E.''
But the judge found that those minor differences don't change the "overall impression of similarity'' to the Adidas trademark design.
Hernandez also noted that he couldn't distinguish between Adidas' Stan Smith and Skechers' Onix shoes when each was presented as evidence just a few feet away from him in court.
Adidas' Stan Smith shoe, named after the American tennis star, is a white leather low-top with rows of holes in the shape of the familiar three-stripe mark and a bright kelly green heel patch.
"Although Skechers points out minor differences between its Onix shoe and the Stan Smith — that the Onix has five, not three, rows of perforations which extend in a different direction, and that its colored heel patch is a slightly darker shade of green — the unmistakable overall impression is two nearly identical shoes,'' Hernandez wrote.
Skechers' attorneys had argued that Adidas's use of the Stan Smith wasn't exclusive because other manufacturers had produced similar white shoes with a colored heel patch. The company also argued that its own distinctive branding and packaging undercut Adidas' claim that the two shoes were confusingly similar.
Hernandez wasn't convinced. "Given the striking similarity between the shoes, there is but one inference to draw: that Skechers knowingly adopted a mark very similar to the Stan Smith to draw off of the success of Adidas's iconic shoe,'' he wrote.
The judge also found the Skechers Supernova mark identical to Adidas' registered mark.
The two companies have been in court before in trademark disputes. Since 1995, these two competitors have either settled lawsuits or written demands over shoe designs, and Skechers each time agreed to stop infringing on Adidas' footwear.
Skechers told the court that any injunction barring it from selling its shoes would hurt the company economically and impair its reputation.
The judge pointed out that Skechers makes many other shoes that are not at issue in this case, reducing the economic impact of his preliminary injunction.
In a statement, Michael Greenberg, president of Skechers, said the company was disappointed in the ruling, but noticed that the disruption to business would be minimal because the injunction involves "only three minor and commercially insignificant Skechers styles that have already been discontinued.''
"While this is a non-issue from a commercial standpoint, we are disappointed in the ruling and fully intend to appeal it in order to ensure that our footwear designers retain the freedom to use common design elements that have long been in the public domain," Greenberg said.
Adidas praised the decision.
"We are grateful that the court recognized the importance of protecting our valuable intellectual property. We will continue to fight to bring a complete stop to Skechers' unlawful behavior," said Maria Culp, Adidas spokeswoman.