What Happened?
Keds, LLC has filed suit against Vans, Inc. in the United States District Court for the District of Massachusetts for trademark infringement, unfair competition, trademark dilution, and breach of contract stemming from the two companies' use of blue labels on the heels of their shoes.
Details of the Case
Keds owns two trademarks for the blue rectangular labels that it affixes to the heels of its shoes.
Examples of Keds' Blue Labels
In its complaint against Vans, Keds states that Vans is selling at
least 21 types shoes bearing labels confusingly similar to
Keds' trademarks in an effort to trade on the marks'
goodwill. Keds further alleges that Vans is well aware that its
designs are infringing. In fact, Vans has been sued by Keds for
infringing the blue label trademarks before.
Keds first filed suit against Vans for infringement in December 2011. In August 2012, Keds and Vans entered into a settlement agreement in which Vans agreed not to make or sell footwear that had rectangular labels on the heel in certain shades of blue. Specifically, Vans agreed not to sell shoes with labels in the colors Marazine Blue, Blueprint, or Gentian Violet, or in any color "confusingly similar" to those three colors.
Keds alleges that despite this agreement, Vans has continued to
sell shoes with infringing blue labels. The 21 Vans shoes at issue
all have labels on the heel that are at least arguably blue, and
they range from shades of blue-grey, to shades of light blue, neon
blue, and navy.
Examples of the Vans Blue Labels at Issue
Keds argues that Vans' continued sale of these shoes
constitutes trademark infringement, trademark dilution, unfair
competition, and breach of the settlement agreement. In addition,
Keds alleges that Vans breached the settlement agreement by
providing Keds a false representation and warranty in the agreement
as to the number of shoes Vans sold with blue labels prior the 2012
settlement. Keds is asking the court to force Vans to stop using
the infringing labels, recall shoes with the infringing blue
labels, and pay Keds all of the profits it made from the sale of
these shoes, among other things.
Why is This Significant?
This case highlights the fact that companies should be careful when it comes to color and trademarks. There may be a great deal of room for interpretation when it comes to colors that are confusingly similar. In addition, this case demonstrates that settlement agreements between companies can be quite nuanced, and they have the potential to subject companies to causes of action even where there is no trademark infringement.
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