American companies that make apparel, footwear, and/or fragrances are using trademark infringement litigation to fight back against perceived copying of clothing designs, shoe designs, and other trademarks.

On August 3, 2010, the maker of Keds shoes filed a trademark infringement suit against Puma North America, Inc, alleging that Puma’s Alexander McQueen Scarred Street sneakers infringe a trademarked two-stripe design that appears on Keds sneakers. In a complaint filed in federal court in Massachusetts, SR Holdings, LLC claims that Puma’s Scarred Street sneakers incorporate a confusingly similar design that is likely to mislead consumers as to the source of the shoes. See SR Holdings, LLC v. Puma North America, Inc., Docket No. 10-cv-11301 (D. Mass. Aug. 3, 2010). Please see below for images of the Keds design, called the Pro-Keds Power Stripe, and the Puma Scarred Street design.

Pro-Keds Power Stripe Shoe	Puma Alexander McQueen Scarred Street shoes

On August 4, denim maker Levi Straus & Co. filed a similar action in California federal court, alleging that competitor Revise Clothing, Inc.’s Vanilla Star jeans infringe Levi’s trademarked Arcuate pocket stitching design. See Levi Strauss & Co. v. Revise Clothing, Inc., Docket No. 10-cv-3427 (ND Cal. Aug. 4, 2010). Please see below for images of the Levi Strauss Arcuate pocket stitching design and the Revise Vanilla Star design.

Levi Strauss Arcuate pocket design	Revise Vanilla Star pocket design

Both Levi Strauss and SR Holdings allege violations of federal trademark and unfair competition law. Both plaintiffs seek damages, an accounting of profits, and to enjoin Revise and Puma, respectively, from any future use of their allegedly infringing designs. Litigation in both cases is ongoing.

A similar trademark infringement case related to a line of fragrances may be drawing to a close. In November 2009, the US Polo Association, Inc. sought a declaratory judgment that using its double horsemen logo on a line of fragrances would not infringe Polo Ralph Lauren Corp.’s polo player trademark for fragrances, after-shave, and similar goods. Polo Ralph Lauren made counterclaims alleging trademark infringement and moved for a preliminary injunction. See United States Polo Association v. PRL USA Holdings, Inc., Docket No. 09-cv-9476 (SDNY Nov. 13, 2009). Please see below for images of the US Polo and Polo Ralph Lauren marks.

U.S. Polo Association double horsemen logo	Polo Ralph Lauren logo

On September 17, 2010, US Polo and Polo Ralph Lauren reached an agreement relating to some of the issues in the case. US Polo has agreed to cease using the color blue as the principal color in its fragrance packaging, and has agreed to halt all fragrance sales pending the court’s ruling on Polo Ralph Lauren’s preliminary injunction motion.

In these cases, Levi Strauss, SR Holdings, and Polo Ralph Lauren hold federal trademark registrations for their respective designs, i.e., the Pro-Keds Power Stripe, the Arcuate pocket stitching design, and the Polo Ralph Lauren logo. These federal registrations present solid evidence of the first element of trademark infringement claims – that the parties claiming infringement own valid, protectable trademarks. To win their cases, these parties must also prove likelihood of confusion. That is, Levi Strauss, SR Holdings, and Polo Ralph Lauren must show that consumers are likely to be confused as to who makes which jeans, sneakers, and fragrances, respectively.

These cases illustrate the extent to which clothing and footwear companies will seek to protect their design trademarks from infringement. Apparel, footwear, and accessory manufacturers preparing products for the market should seek the advice of intellectual property counsel on how to protect their valuable intellectual property and how to avoid possible trademark infringement claims. To learn more about Arent Fox’s work in this area, please contact:

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

Sarah Bruno
bruno.sarah@arentfox.com
202.775.5760

Grace L. Applefeld
applefeld.grace@arentfox.com
202.857.6498