Mixed news for Adidas in Skechers trademark dispute

Adidas has been given both good news and bad news in its trademark fight with Skechers as the US Court of Appeals for the Ninth Circuit has upheld one preliminary injunction and reversed another.

Circuit Judge Jacqueline Nguyen delivered the Ninth Circuit’s opinion on May 10.

Sports brand Adidas filed the lawsuit at the US District Court for the District of Oregon, Portland Division against footwear company Skechers in 2015. The claim accused Skechers of trademark and trade dress infringement and dilution in relation to two of Skechers’ shoe designs.

Adidas is known for its signature three-stripe mark, which is a central part of the company’s branding strategy and also the focus of a number of trademark registrations. The brand said 40 million pairs of its best-selling Stan Smith shoe have been sold worldwide.

Adidas has sued Skechers “several times in the last twenty years for infringement of its three-stripe trademark”, the Ninth Circuit explained.

In the 2015 suit, Adidas asked the district court for a preliminary injunction to stop Skechers from selling its Onix trainer, which Adidas said looked like its Stan Smith shoe, and the Cross Court trainer, which has a three-stripe mark on the side.

The court granted the preliminary injunctions and Skechers appealed to the Ninth Circuit.

By a 3-0 vote, the Ninth Circuit upheld the preliminary injunction stopping Skechers from selling its Onix trainer. But the panel reversed the preliminary injunction which had barred Skechers from selling its Cross Court shoe, in a 2-1 vote.

Adidas showed that it would suffer irreparable harm by the continued sale of the Onix shoe, the Ninth Circuit said, as the Stan Smith product has a “specific reputation” with “intangible benefits”.

Though the district court did not err in finding that Adidas showed a likelihood of success on its trademark infringement and trademark dilution claims in relation to the Cross Court shoe, it “abused its discretion” in issuing a preliminary injunction, the Ninth Circuit said.

It held that Adidas failed to show that its three-stripe mark would suffer irreparable harm from the sale of the shoes.

Dissenting, Circuit Judge Richard Clifton said the district court was “well within its discretion to infer that confusion between Skechers’ ‘lower-end’ footwear and Adidas’s footwear was likely to harm Adidas’s reputation” and “this is precisely the type of harm that is ‘irreparable’”.

The full trial is scheduled to take place on June 4 in the Portland district court division.