On September 29, 2008, Asics Corporation filed suit against Dolce & Gabbana alleging federal and state trademark infringement, dilution, false advertising and unfair competition. The complaint, filed in the US District Court for the Central District of California, alleges that Dolce & Gabbana is using a design similar to Asics’ trademark stripe design on at least five styles of shoes. Asics claims that its stripe design, which it has used on footwear and apparel products since the mid-1960s, is famous and that the public identifies the design with the Asics brand. According to Asics, Dolce & Gabbana’s use of a similar design is a willful and malicious attempt to pass off their shoes as high-quality Asics shoes, and is causing consumer confusion in the marketplace. Asics is seeking injunctive relief, trebled compensatory damages, punitive damages, attorney’s fees and costs, and the cost of corrective advertising. Asics is also requesting that Dolce & Gabbana destroy any products in its inventory that infringe on Asics’ stripe design.

This is the latest of several trademark suits filed by Asics against competing designers and retailers in an increased effort to police its stripe design. In a recent case against Skechers, Asics dismissed its claim with prejudice after Skechers countered that Asics had “allowed other companies’ striped shoes to coexist in the marketplace for years without taking action,” thereby diminishing the strength of its trademark. After reaching a settlement with designer/retailer Steven Madden, Asics instituted a subsequent action accusing the former of violating the terms of the settlement by allegedly selling “colorable imitations” of Asics’ shoes from its warehouses. The action against Steve Madden is currently pending. Asics has also lodged infringement actions against Ralph Lauren, Target, Mossimo, Nine West Group, Payless ShoeSource and Danskin in recent years.

The Arent Fox intellectual property group represents a number of footwear and apparel designers and retailers in trademark and related IP matters, and is monitoring developments related to this case and other similar cases.

If you have any questions, please contact:

Anthony V. Lupo
lupo.anthony@arentfox.com
202.857.6353

David S. Modzeleski
modzeleski.david@arentfox.com
202.857.6073