Design patents are often the go-to option for protecting the visual features, or design, of a product. But design patent protection is not always available, such as after the product has been on sale, offered for sale, or otherwise known to the public. As part of any design protection strategy, particularly when design protection is no longer available, consideration should also be given to whether the design of a product may constitute protectable trade dress.

As illustrated by the three-year-long match between adidas and Skechers, which involved adidas’s trade dress rights for the Stan Smith shoe, even unregistered trade dress rights can serve as a valuable enforcement tool against copycats. In the case against Skechers,[1] the Ninth Circuit affirmed the district court’s grant of a preliminary injunction enjoining Skechers from selling shoes that infringed adidas’s trade dress.

The Stan Smith trade dress is “a classic tennis shoe profile with a sleek white leather upper, three rows of perforations in the pattern of the adidas three-stripe logo, defined stitching enclosing the perforations, a raised mustache-shaped colored heel patch, and a flat tonal white rubber outsole.” The Ninth Circuit affirmed the district court’s determination that the trade dress had acquired distinctiveness, and that adidas was likely to succeed on its infringement claim against the Skechers Onix shoe because the similarities between it and the Stan Smith trade dress are unmistakable. Both feature a white leather upper, a raised green mustache-shaped heel path, angled stripes with perforations, the same defined stitching pattern around the perforations, and a flat white rubber outsole. Minor differences, including the use of Skechers’s logo on the accused product, do not negate the overall impression of similarity between the two.

For brand owners wishing to establish trade dress rights in the design of a product, adidas v. Skechers provides several points worth considering.

First, accurately identify the trade dress elements. Consider which elements of the product design—for example, shape, size, color, surface treatment and/or ornamentation, material—either alone or combined, make the product design unique relative to other similar products. The asserted Stan Smith trade dress was defined as being comprised of the combination of shape (“a classic tennis shoe profile”), color (“white), material (“sleek leather upper” and “flat rubber outsole”), surface treatment (“three rows of perforations in the pattern of the adidas three-stripe logo” and “defined stitching enclosing the perforations”), and surface ornamentation (“a raised mustache-shaped colored heel patch”).

Ideally, many—if not all—these elements are purely aesthetic, not functional. Being able to verbalize these elements very clearly can help with the registration process, which requires a description of the specific elements being claimed and a matching drawing illustrating the same.

Second, as with all trademarks, the trade dress design must be nonfunctional. In other words, the design, as a whole, must not affect the usefulness of the product. Evidence of nonfunctionality can include the availability of alternative designs, or the existence of a design patent for the product design. Conversely, advertising touting the product design’s functional advantages, or a utility patent—even one that is expired—which claims the aspects of the product design or touts the functionality of the design can be evidence of functionality. Thus, advertising and utility patents should be drafted carefully, to avoid characterizing a product design as functional (e.g., “ergonomic”).

This does not mean that a product’s overall design is ineligible for trade dress protection if some of its individual elements are functional. With respect to the Stan Smith trade dress, the district court acknowledged that some of the design’s individual elements, like the rows of perforation and the white color of the upper and outsole, might be functional, but rejected Skechers’s “divide and conquer” approach to analyzing functionality. According to the court, the Stan Smith design as a whole—that is, the overall visual impression created by the combination and arrangement of its individual elements—is nonfunctional; the Stan Smith design’s particular set of features as a whole do not make the shoe work better or cost less than other similar sneakers in the current marketplace.

Third, the design must be inherently distinctive, or have acquired distinctiveness. Consumers must be able to view the design as a source indicator, rather than as the type of product itself. Evidence of acquired distinctiveness may include long-running exclusive commercial use, considerable sales figures, established market position, considerable expenses related to promotion of the trade dress, and proof of intentional copying by others. A design patent on a design for a product can provide a period of exclusive use of the patented design, to establish such evidence of acquired distinctiveness.

With respect to the Stan Smith shoe design, the Ninth Circuit held that the district court had not clearly erred in concluding that the trade dress had acquired distinctiveness based on ample evidence in the record. For example, adidas has used the Stan Smith trade dress exclusively since the early 1970s—a particularly impressive feat when considering that the shoe design does not appear to have ever been protected by design patent. The evidence of record also showed that adidas expended considerable capital and human resources to promote the shoe, and that the Stan Smith trade dress has received significant unsolicited media coverage praising the trade dress for its iconic status. Additionally, Skechers’s use of metadata tags on its website that directed consumers searching for Stan Smith shoes to a Skechers website is proof of copying that strongly supports an inference that Skechers was aware of the acquired distinctiveness of the Stan Smith shoe.

Fourth, apply for registration of the trade dress design with the U.S. Patent and Trademark Office (USPTO). Notably, adidas owned neither a trademark application nor a registration for the Stan Smith shoe design when it filed suit against Skechers—or even before the Ninth Circuit issued its decision. adidas v. Skechers demonstrates that trade dress rights can be acquired without formal registration at the USPTO—but that task is not an easy one, as illustrated by the volume of evidence adidas put forth to satisfy its burden of demonstrating that the Stan Smith shoe design is nonfunctional and distinctive.

Not surprisingly, adidas recently applied to register the Stan Smith shoe design with the USPTO. [2] While the district court and Ninth Circuit have found adidas’s Stan Smith trade dress distinctive and nonfunctional, and thus that adidas has common law rights in the trade dress, the USPTO will likely require much of the same type and amount of evidence to show that the trade dress has acquired distinctiveness and is nonfunctional. Though the process of obtaining a registration can be cumbersome, adidas’s initiative suggests the value that a registration can provide protection against future copycats, such as presumption of validity and incontestable status of a design.

Finally, there is no time bar for acquiring trade dress rights. Unlike design patents, trade dress rights in a product may be acquired at any time after the sale or offer for sale of a product. adidas capitalized on the fact that it had exclusively used the Stan Smith shoe design for over 30 years. While this fact would weigh against obtaining a design patent, it clearly had the opposite effect with respect to adidas’s trade dress rights in the design: such longstanding commercial use provided substantial evidence in demonstrating that the Stan Smith shoe design had acquired distinctiveness, and was entitled to (unregistered) trade dress rights.

By keeping these points in mind, brand owners can better assess whether a product should be evaluated for eligibility for trade dress protection.

[2] U.S. Appl. No. 88/041,016, filed July 17, 2018

This article appeared in the September 2018 issue of MarkIt to Market. To view our past issues, as well as other firm newsletters, please click here.