IP Law Daily, TRADEMARK—S.D.N.Y.: The thong remains the same? Sandal-maker accuses competitor of copying its marks, (Sep 28, 2022)
By Matthew Hersh, J.D.
The footwear fracas will go to trial on all claims.
The maker of a top-selling maker of thong sandals is entitled to go to trial on its claim that a competitor wove a lookalike of its logo into the strap of its footwear, the federal district court in Manhattan has held. The court, dismissing with relative dispatch a multi-faceted summary judgment motion brought by the competing summer-footwear designer, found that the trademark holder had tendered ample evidence to present its case to the jury (River Light V, L.P. v. Olem Shoe Corp., September 27, 2022, Schofield, L.).
The lawsuit involves the Tory Burch Miller Sandal, a style of summer footwear that is popular among sandal aficionados. The sandal is made with three grommet straps folded over to hold a distinctive medallion—in the form of two T’s facing each other back-to-back—at the center. The sandal-maker sued Olem Shoe Corp., a competitor in the footwear business, over its alleged infringement of the logo—and more generally, its overall trade dress—in its own strap mechanism. The sandal-maker brought claims of trademark infringement, trade dress infringement, and various state law claims.
Both parties moved for summary judgment on aspects of the claims, leading to this opinion.
Trade dress infringement. The court denied the competitor’s summary judgment motion on the trade dress claim, allowing the claim to go to trial. A plaintiff alleging trade dress infringement, the court explained, must demonstrate that the design is (1) not functional, (2) inherently distinctive (or has acquired secondary meaning in the marketplace) and (3) likely to be confused with defendant’s allegedly infringing designs. The sandal-maker met all three prongs of the test, the court held.
The court first found that the sandals at issue were not functional. The competitor argued that the prominent hardware piece, namely the “conspicuous stitch” of the sandals and the use of straps, were functional because the sandals would fall apart without these features. But the footwear maker’s trade dress “does not consist of just any medallion held together by three straps,” the court observed. Rather, the court noted, the alleged trade dress at issue included not only the straps but also a medallion in the form of the two T’s. A reasonable jury could find that there was nothing about this so-called “medallion sandal” was function, the court held.
The court also held that the sandal-maker had demonstrated sufficient evidence on secondary meaning to get to a trial. Six factors are relevant, the court noted, in determining whether a mark has acquired secondary meaning: (1) advertising expenditures, (2) consumer studies linking the dress to the source, (3) unsolicited media coverage of the product, (4) sales success, (5) attempts to plagiarize the dress, and (6) length and exclusivity of the dress’s use. The sandal-maker had tendered “a plethora of evidence,” the court found, on each of these factors. For example, the court noted, the company had spent considerable sums on advertising, had garnered significant media coverage for its footwear, and had engaged in a sustained effort to enforce its marks. Moreover, the court noted, the company had provided consumer studies supporting its claim that consumers associated the style of footwear with the company. That was more than enough to get to trial, the court held.
Finally, the court concluded, the company had tendered sufficient evidence as to the likelihood of confusion. Under Second Circuit precedent, the likelihood of confusion is evaluated based on (1) strength of the plaintiff’s trade dress; (2) similarity of the dresses; (3) proximity of the products in the marketplace; (4) likelihood that the plaintiff will “bridge the gap” between the products; (5) evidence of actual confusion; (6) the defendant’s bad faith; (7) quality of the defendant’s product; and (8) sophistication of the relevant consumer group. These factors also weigh in favor of trial, the court concluded. A reasonable jury could conclude, for example, that the appearance of the two sandals was similar (particularly in their use of “symmetric design and negative space”), the companies were sold in similar markets, the competitor acted in bad faith (indeed, there was evidence that it deliberately set out to copy the original), and that the quality of the company’s sandals was superior to that of its competitor’s. Moreover, the court noted, the sandal-maker had tended survey evidence showing actual consumer confusion—arguably the most important factor of all. Thus, the claim would go to trial.
Trademark infringement. The court also rejected the competitor’s effort to prevail as a matter of law on the trademark infringement claim. Here the question was not the overall trade dress but rather the specific registered “TT” logo. But the conclusion was largely the same. A reasonable jury could find that the TT logo was strong, the court reasoned, because it appeared to be an “arbitrary” design and the evidence suggested that it was ubiquitous and “instantly recognizable” by consumers. Moreover, the court noted, although the logos were not identical—most importantly, the competitor’s design did not strictly contain the letter “T”—both made “extensive use of negative space and symmetry” and their “general impression” was at least arguably similar. Moreover, the two sandals were sold in the same markets. That was enough, the court concluded, to allow a jury to have the last word.
Other claims by the competitor. Finally, the court denied the competitor’s motion for summary judgment as to several other claims, namely false designation and various common law claims. The conclusion here was largely predetermined by the trademark infringement and trade dress analysis. The standards for false designation and trademark infringement under were identical, the court noted, so this claim would proceed. As to the common law claims—dilution and injury to business reputation, trademark infringement, and unfair competition—these would remain in the case for similar reasons.
The trademark holder’s summary judgment motion. The court rendered a mixed ruling on the trademark holder’s own motion for summary judgment. The competitor’s counterclaim for fraud on the PTO would be dismissed, the court found, because the competitor did not come close to showing “clear and convincing evidence” that the company lied to the PTO about the date that it first used the “TT” mark in commerce. All of the competitor’s affirmative defenses would also be denied, the court noted, largely based on the same analysis as the earlier claims. But the trademark holder failed to win summary judgment as to one of the trade dress factors, namely functionality. The claim was strong, the court reasoned, but there was no point in granting summary judgment on this factor when other trade dress factors remained in play.
The case is No. 1:20-cv-07088-LGS.
Attorneys: Diana Hughes Leiden (Winston & Strawn LLP) for River Light V, L.P. Bernardo Burstein (Burstein & Associates, P.A.) for Olem Shoe Corp.
Companies: River Light V, L.P.; Olem Shoe Corp.
Cases: Trademark NewYorkNews GCNNews