Recently, the site The Business of Fashion posted a story about a trade dress dispute between shoe startup Allbirds and its much larger competitor, Steve Madden. Allbirds is known for their extremely distinctive wool-based sneakers, which caught the fancy of the shoe scene in 2016, and is expected to top $50 million in revenue this year.
In their lawsuit, Allbirds detailed the obvious similarities between their Women’s Wool Runners, and Steve Madden’s women’s Traveler sneakers, which are sold by Zappos and other online retailers. In their lawsuit, Allbirds points out a number of significant similarities between the two shoes, including:
- The use of a wool textile for the entire upper portion of the shoe
- The design of the sole, which features a unified midsole and outsole
- The incorporation of embroidered fabric eyelets
- The inclusion of rounded, woven cord-style shoelaces
Even to the layman, a quick comparison of the two shoes in question shows that the similarities described by the lawsuit are substantial:
Due to these similarities, Allbirds argues that Steve Madden has violated the company’s trade dress. As the Business of Fashion article points out, because the wool sneaker design is representative of Allbirds’ single distinctive brand, infringement is far more damaging to the company than it would be for, say, Nike or another company that produces an endless variety of shoes.
The article’s writer is accurate in this regard—the extremely distinctive design and composition of the Allbirds sneaker is clearly emblematic of the brand as a whole. However, I strongly believe that the writer is off the mark in their assumption that Steve Madden will settle, simply because, “many of these types of design infringement lawsuits are settled before they ever become public.”
In fact, I believe that Allbirds will likely lose their lawsuit against the much larger—and likely better-defended—Steve Madden, and in the process it will cost them a fortune. Trade dress simply does not provide protections against the sort of design infringement that Steve Madden engaged in. Sadly, Allbirds could have had an ironclad case against Steve Madden, with only a little preparation. Here’s why.
What is trade dress?
Have you ever glanced at a product or a piece of packaging and immediately recognized what it was? You didn’t even have to think about it. Something about it—maybe the logo, the styling of the font, or just the overall feel of the thing—immediately triggers your brain. The clean white minimalistic packaging of an Apple iPhone, the distinctive cardboard tube of a Pringles can, the striated curves and cursive labeling of a classic glass Coca-Cola bottle: These are all examples of trade dress.
These all communicate a very distinctive feeling that you just know. Note that this has nothing to do with how these products work or are used. In fact, trade dress cannot be predicated on the functional aspects of a product or brand. Trade dress is comprised of all the non-essential bits and pieces that, when summed up, form the identity of a brand or product. And while it’s possible to register a trade dress with the USPTO, it actually isn’t necessary. As with copyright, trade dress is protected automatically. There are a number of advantages to doing so, but we don’t discuss those here.
Necessarily, the umbrella of trade dress is very broad. As described in John J. Harland Co. v. Clarke Checks, Inc.:
“Trade dress” involves the total image of a product and may include features such as size, shape, color or color combinations, texture, graphics, or even particular sales techniques.
Note that no particular single feature can be claimed as trade dress. As described in SK&F, CO. v. Premo Pharmaceutical Laboratories:
Trade dress is a complex composite of features. One may be size, another may be color or color combinations, another may be texture, another may be graphics and arrangement and so on. Trade dress is a term reflecting the overall general impact, usually visual, but sometimes also tactile, of all these features taken together. The law of unfair competition in respect to trade dress requires that all of the features be considered together, not separately.
Did Steve Madden violate Allbirds’ trade dress?
With all of the above in mind, in looking at the shoes produced by Allbirds and Steve Madden, well it’s obvious that the latter violated the trade dress of the former, right? Unfortunately for Allbirds, probably not.
The benchmark for trade dress infringement is outlined in section 43(a) of the Lanham Act, which states that an individual or company is liable for trade dress infringement when they use:
[A]ny word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which… is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person…
Essentially, the trade dress of a brand or product must be so impressed upon the public conscience that a product intentionally or inadvertently duplicating that trade dress would likely make a customer believe it was a product produced by the infringed upon brand.
Thus, the fate of Allbirds’ argument rests upon this question: Is the design of Allbirds’ so unique and so well-recognized that the majority of people, when presented with a wool-based shoe sneaker, would immediately recognize it as being an Allbirds product?
Almost certainly not. The shoes are undeniably similar. If Steve Madden had borrowed other elements of Allbirds’ trade dress, such as the cursive style of their logo, their use of simple line art in their promotional materials and website, their “world’s most comfortable shoe” claim, etc., then Allbirds would potentially have a case.
But simply producing a wool-based sneaker almost certainly does not meet the threshold for trade dress infringement. Unfortunately, Allbirds could have easily prevented this from happening in the first place.
If Allbirds had obtained a design patent on their shoes, Steve Madden would most certainly be liable for infringement.
As I have discussed previously, a design patent is a patent which protects how an item looks. Design patents can be used to cover just about anything: clothing items, purses, phone operating system interfaces, toys, and yes, shoes.
In fact, Nike has an immense number of patents. As of 2015, the company held more than 5,000 patents. Many of them are utility patents—which protect how something works—for everything from manufacturing robots to 3D design systems. However, most of them are design patents covering the distinctive look of many of their most popular shoes. And Nike isn’t afraid to protect their design patents: They have sued everyone from Walmart to Adidas to Sketchers, FILA, and K-Mart (among others) for duplicating design elements of their shoes.
Design patents are incredibly cheap to obtain, as far as business expenses go. For as little at $2,000, Allbirds could have obtained a design patent on their wool sneakers which would most certainly have resulted in winning a significant settlement against their much larger competitor. Instead, Allbirds may end up spending millions on their lawsuit, and will almost certainly lose.
The object lesson is, if your brand’s identity is built upon the very distinctive look and feel of your products, then the wise thing to do is to protect that look and feel by obtaining a design patent.
If you would like assistance with obtaining a design patent for your product, the Law Office of Michael O’Brien can help. For more information, contact us today by calling (916) 760-8265, or sending us a message using our contact form. With our expertise, we can help you protect your products from imitators and infringers, and avoid the likely fate of Allbirds.