European Union: Rube Goldberg Trademark Infringement: Adidas AG v Skechers USA Inc. — A Lesson On Why We Need To Learn From The EU

Last Updated: September 22 2015
Article by Leonard N. Budow

Trademarks and design rights are a woeful but combustible combination. Another day and another trademark infringement suit is commenced to circumvent the lack of effective design protection rights in the United States. On September 14, 2015, Adidas America Inc., sued Skechers USA Inc. in the Federal District Court in Oregon alleging in a 35 page complaint that Skechers infringed the Adidas trademarks known as Stan Smith Trade Dress and Three Stripe Mark.1

There are both commercial and legislative reasons why Adidas apparently decided to continue to pursue enforcement of trade dress and design claims which should not be under the purview of the Lanham Act and trademark laws in the United States.2 Commercially, one can speculate that the announcement in May 20153 that Skechers apparently became the number 2 player in the sports footwear market with prior number 2 Adidas "sinking" to number 3 did not sit well internally with Adidas. Skechers leapt into second place with approximately 5% of the marketplace and Adidas sank to third with 4.6% of the United States share.4 Failure in the competitive marketplace must lead to post mortems; was the failure due to misfiring of the marketplace position with cutting edge designs or fabrics, or was it due to various forms of unfair competition? From the perspective of the design team and middle managers, the latter response obviates any need to explain commercial marketplace failures.

However, the real failure lies with the present intellectual property regime surrounding fashion designs in the United States. The European Model shows a way forward. The European Union ("EU") in its Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 ("Directive") on the legal protection of designs required each member nation to:

  1. (P)rotect designs by registration, and shall confer exclusive rights upon their holders in accordance with the provisions of this Directive.
  2. A design shall be protected by a design right to the extent that it is new and has individual character.
  3. A design applied to or incorporated in a product which constitutes a component part of a complex product shall only be considered to be new and to have individual character:

(a) if the component part, once it has been incorporated into the complex product, remains visible during normal use of the latter, and

(b) to the extent that those visible features of the component part fulfil in themselves the requirements as to novelty and individual character.(Emphasis Added)

Simply put, a design is subject to protection if the design is novel, meaning that it is new, has not been made available prior to publication and it must resonate with an informed consumer who would find it unique from other designs. This makes business sense and ameliorates issues regarding knocking offs5 let alone exact copying. Registered designs are protected for the first term for five years and thereafter subject to extension for up to twenty five years. Unregistered designs are protected for three years from publication. In addition to the EU protection, the Member States can create and enforce their own intellectual property protection structures6.

In the United States no such regime exits. The most recent attempt at protecting fashion design was introduced by Senator Charles Schumer by The Innovative Design Protection Act of 2012 (the "IDPA"). ( S.3523-112th Congress (2011-2012). Although woefully short of the Directive7, it would have ameliorated the worst offenses.

That leaves designers with recourse to Rube Goldberg complaints which conflate intellectual property crafted and intended to connote source of goods to design protection. Today a designer must look to trademark, patent8 and copyright protection which effectively is not structured or intended to protect fashion designs.

Copyright protection protects original works of authorship fixed in any tangible medium of expression9 and should be the obvious default for apparel design protection. But fashion designs are not protected by copyright law. The reason is that clothing is considered by definition to be functional so it is a useful article and useful articles are not subject to copyright protection.10 While it is possible to secure copyright protection if one can show the design can be identified from and apart from the apparel, it is a functional high bar.

Trademark law seeks to apprise a consumer of the source of the goods. This means a unique, distinctive trade name or logo so there is no confusion as to the creator of the goods. Trade dress protection goes to the overlook and feel of packaging that serves to identify source. The key in both of these frameworks is to identify who or what produced the goods. Style as to how that is done is not the concern. So long as a consumer, without confusion, can identify the source of goods based upon the trade name, logo or trade dress which has acquired secondary meaning11, trademark protection is available. But a fashion design is not indicative of source otherwise every garment would be a trademark.

The paucity of United States fashion design protection encourages counsel to grasp at whatever arrows may be in the quiver of United States intellectual property rights to protect a perceived or actual misappropriation of an original design. So what to make of the Adidas case against Skechers? Adidas effectively is arguing that Skechers produced a "Stan Smith Kock Off," a design copy, and therefore infringed the Mark. Therein lies the Rube Goldberg quality of this case; Adidas complains of a design copy and brings a case based on source confusion.

First recall that trademark must connote source of goods. Applying that concept to the Adidas case, one is factually befuddled when viewing the Stan Smith Knock Off and the Stan Smith Trade Dress Shoe. The Stan Smith Trade Dress Shoe replaces the Adidas three stripe mark with angled perforations which does not resemble a stripe. Looking at that design, it will take creative surveys and evidence to establish the secondary meaning by which the Stan Smith Trade Dress Shoe is associated with Adidas; to be clear if the Stan Smith Trade Dress Shoe had the Adidas Three Stripe Mark12 the argument might be different. But that is not the case. So if the Stan Smith Trade Dress Shoe does not denote Adidas, it will take a leap of faith to find confusion with the Skechers shoe.

But most telling is the Complaint denomination of the Skechers shoe as the Stan Smith Knock Off. Without belaboring it, knocking off has been seen as the creative engine of the fashion industry. A knockoff is not counterfeit wherein one affixes a trademark to confuse the actual source of goods. In the Adidas Skechers case there is a close resemblance; but merely knocking off, as labeled in the Complaint, is not a violation of trademark law.

While this will be an interesting case to follow the real response from the legal and fashion community to address the paucity of existing fashion design protection in the United States and to converge with the regime existent in the EU.


1. The Complaint also alleges infringement of the Supernova trademark which unlike the Stan Smith and Three Strip is not trade dress but a true trademark.

2. The purpose herein is to address only the Federal trademark and Trade Dress Infringement and Trademark Dilution claims, not the related State and Common Law claims

3. See Skechers Overtakes Adidas; Becomes No 2 in U.S. Footwear Zacks Equity Research Published May 20, 2015 here.

4. Nike was and remains the Number 1 brand in the United States.

5. See discussion below regarding the "Stan Smith Knock Off"

6. For example see the French Intellectual Property Code Artc. L 112.2. See Red Soles Aren't Made for Walking: A Comparative Study of European Fashion Laws, 5 Landslide 6, available here.

7. The IDPA only protected against intentional, deliberate copies that are "substantially identical." This language is a potential bonanza for the Intellectual Property litigation bar.

8. 35 U.S.C.A. § 171 Design Patents are theoretically available but due to the extended time necessary to secure the same, cost and the burden of proving that the design is novel or nonobvious, they are rarely deemed a useful vehicle.

9. 17 USCA §102

10. 17 U.S.C. § 101

11. For background on trade dress and secondary meaning see 1 McCarthy on Trademarks and Unfair Competition §8:5 (4th ed.); TarfFix Devices, Inc. v. Marketing Displays, Inc. 532 US 23, 58 USPQ2d 1001 (2001)

12. The three stripes have acquired secondary meaning and are ineluctably associated with Adidas

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Leonard N. Budow
In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.