Fashion Law Series – Part II: These Shoes’ Patents are Made for Enforcing
Nike. Adidas. Crocs. Puma. Skechers. The number of major shoe players taking advantage of intellectual property law to protect their athletic shoe designs is on the rise. Not long ago, in November 2015, Converse filed lawsuits against 31 retailers and manufacturers alleging trademark infringement in connection with its Chuck Taylor sneakers. While it seems that the Chuck Taylor trademark chapter has come to an end, new chapters are opening up. When it comes to shoe designs, as with trademarks, patents are being used as a weapon against competitors who are selling shoes having similar designs. Earlier this year, in January 2016, Nike, who acquired Converse in 2003, filed suit against Skechers USA for patent infringement concerning design patents directed to athletic shoe designs. The design patents listed in the lawsuit related to the designs of the Burst, Flex Appeal and Flex Advantage athletic shoes. On May 20, 2016, the Court granted an unopposed motion to stay proceedings in the lawsuit until October 31, 2016. The motion was granted in an effort to wait until inter partes review (IPR) proceedings are held by Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO). (See Shoe Wars – Taking the Battle to the Patent Trial and Appeal Board) As a result, we will have to stay tuned to see how these proceedings play out and the remainder of the Nike v. Skechers patent chapter is written.
Nike opened another patent chapter by initiating a lawsuit against Adidas accusing its competitor of infringing upon a Nike patent directed towards the Nike Flyknit shoe. Adidas fought back by filing a petition to request that the Nike patent be invalidated. Adidas asserted that the process of making the shoe upper was allegedly already in existence before Nike patented the technology. Adidas was partially successful in using patent law as a weapon against Nike because the PTAB reached a decision in favor of Adidas. However, earlier this year in February 2016, the United States Court of Appeals for the Federal Circuit held that the PTAB needed to consider features provided in the Nike patent directed towards the Flyknit shoe; thus, this case is still ongoing. Adidas also filed suit including the same arguments in Europe and won.
Nike and Adidas are not the only shoe companies using patent law in attempt to crush the competition. In 2015, Skechers sued Steve Madden for allegedly infringing patents directed to its Go Walk collection; and, in 2011, Skechers sued Steve Madden for allegedly infringing patents directed to its Twinkle Toes shoes. Both lawsuits were settled before any decision was made as to whether infringement occurred.
So, why are these shoes’ patents made for enforcing? Shoe companies, especially the major players, have been able to increase profits, likely millions of dollars, by protecting distinctive features, whether aesthetic or functional, of their products (e.g., Skechers’ Twinkle Toes that light-up and Adidas’ method of knitted material to construct the shoe upper of soccer shoes). As a result, patents directed towards fashion designs and ideas are becoming more prominent and strictly enforced worldwide, regularly opening up new chapters in the crosshairs of fashion and intellectual property law.
Sources: http://koin.com/2016/01/06/nike-sues-skechers-in-trademark-fight/ http://www.cafc.uscourts.gov/sites/default/files/s14-1719_Opinion_2-9-2016.pdf http://footwearnews.com/2015/business/uncategorized/skechers-sues-steve-madden-go-walk-copyright-infringement-42625/ http://www.law360.com/articles/747868/skechers-steve-madden-settle-design-patent-suit http://qz.com/365948/nike-is-fighting-three-legal-battles-to-protect-the-brands-design-soul/
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Klemchuk LLP is an Intellectual Property (IP), Technology, Internet, and Business law firm located in Dallas, TX. The firm offers comprehensive legal services including litigation and enforcement of all forms of IP as well as registration and licensing of patents, trademarks, trade dress, and copyrights. The firm also provides a wide range of technology, Internet, e-commerce, and business services including business planning, formation, and financing, mergers and acquisitions, business litigation, data privacy, and domain name dispute resolution. Additional information about the patent law firm and its patent attorneys may be found at www.klemchuk.com.
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