Entries in unfair competition (7)


Skechers v. Fila

Skechers USA filed a complaint against Fila in the Central District of California-Western Division, alleging infringement of US D661,884 and US D688,446, both directed to slip-on shoes, and alleging unfair competition and trade dress infringement of trade dress rights in Skechers Go Walk(R) shoe.

The complaint states a letter providing written notice of infringement was sent to Fila in July 2013, and in August 2013, Fila agreed to cease making the allegedly infringing shoe, the Amazen Memory Moc (referred to as "Version 1").  Allegedly, Fila stated it redesigned the Amazen Memory Moc (the redesign referred to as "Version 2") and agreed to cease manufacture of Version 1.  However, the Complaint states Version 1 "is still available for purchase nearly one year after Skechers' written notice." Complaint, pages 3 and 20.

Version 1 is alleged to infringe the trade dress of the Skechers Go Walk(R) shoe as well as both US D661,884 and US D688,446, while Version 2 is alleged to infringe only US D661,884.  Images from the complaint embodying the allegations are reproduced below:

[US D661,884]

[US D688,446]

[Trade Dress illustration: Skechers Go Walk(R) (top); Fila Amazen Memory Moc (Version 1) (bottom)]


Skechers v. Perry Ellis

On October 11, 2013, Skechers U.S.A. Inc (Skechers) filed a Complaint against Shoe Confession LLC, Perry Ellis International, Inc. and PEI Licensing, Inc. (Perry) in the U.S. District Court for the Central District of California (Skechers U.S.A. Inc. et al. v. Shoe Confession LLC et al. 2:13-cv-07573).

The Complaint alleges willful and intentional infringement of Skechers’ D651,788, D652,613, D652,614, and D650,980 design patents, trade dress infringement, and unfair competition, as related to Skechers’ GO RUN® shoe and the Defendants’ Pro Player Phaze 2M shoe.

The ’788, ’613, ’614 and ’980 patents relate to an ornamental nub pattern on a sole bottom and outsole periphery, as shown in the Figures below from the Complaint.

Skechers ‘788 patent – Shoe Bottom






Skechers ‘613 patent –Shoe Bottom





Skechers ‘614 patent – Shoe Bottom





Skechers ‘980 patent – Shoe outsole and peripehry






 In the Complaint, Skechers identified the distinctive ornamental features of the trade dress as 1) a pattern of large nubs forming an X, as shown by red arrows in the figures below, 2) mid-size and smaller sized numbs surrounding the X-pattern, indicated by blue arrows below and 3) a repeating pattern of cleats and nubs on the periphery, indicated by yellow and green arrows below.

Reproduced below are the sole bottom and outsole periphery of the Skechers GO RUN® and of the Pro Player Phaze 2M, as shown in the Complaint.

SKECHERS GO RUN® Sole BottomSKECHERS GO RUN® Outsole Periphery









Pro Player Phaze 2M Shoe Outsole PeripheryPro Player Phaze 2M Shoe Sole Bottom








The Complaint listed four causes of action in view of the alleged design patent infringement. Skechers stated that the Pro Player Phaze 2M so closely resembled the invention claimed by each of the four patents that an ordinary observer would be deceived into purchasing the Pro Player in the mistaken belief that the Pro Player includes the inventions disclosed in these patents.

Skechers argued in the Complaint that it “has suffered, is suffering, and will continue to suffer irreparable injury with no adequate remedy at law,” and requested a permanent injunction against further infringing conduct by the Defendants.  Skechers further claimed that it was “damaged and losing profit’ by the Defendants” alleged willful infringement, and entitled to recover damages and total profit derived from the alleged infringement.

The Complaint further listed fifth and sixth causes of action in view of Federal unfair competition and trade dress infringement.  Skechers claimed that by allegedly using its sole bottom trade dress and outsole periphery trade dress, the Defendants deceived typical consumers in the mistaken belief that the Pro Player Phaze 2M emanated from a single source, with the acquired distinctiveness owned exclusively by Sketchers.

Skechers argued in the Complaint that the Defendants’ conduct allegedly constituted a “false designation of origin and false and misleading representation of fact likely to cause confusion, and to deceive by wrongly suggesting an affiliation connection or association with Skechers.” Skechers claimed that it was “damaged and losing profit” due to the alleged infringement and alleged unfair competition, and as such was entitled to recover damages and profits due to the Defendants’ alleged violations of the Lanham Act.

The Complaint listed a seventh cause of action in view of common law unfair competition. Skechers claimed that the Defendants are “willfully, fraudulently, oppressively, maliciously, and unlawfully attempting to pass off and passing off infringing footwear” as those approved by Skechers.

In the Complaint, Skechers requested a judgment directing destruction of all infringing goods and all instrumentalities used in the production, including tools, machines and equipment, within 10 days of the judgment. Skechers further requested that the judgment award damages, lost profits, reasonable royalties and other monetary amounts.  In particular, Skechers requested damages as a result of infringement, total profit from the sales of the allegedly infringing footwear, and damages as a result of the alleged unfair competition and of the lost business opportunities, with all damages being trebled.  Skechers further requested punitive damages, restitution, attorneys’ fees, pre-judgment interest at the maximum rate, and costs of the suit. A jury trial was requested.


Lindby Custom successfully enforces a design for motorcycle parts, but would the proposed PARTS legislation have affected the court’s ruling?

On February 15, 2012, the U.S. District Court for the Central District of California entered Default Judgment in the matter of Lindby Custom, Inc. v. AMI Group (case no. 8:10-cv-01779).  In its Complaint, Lindby Custom alleged infringement of U.S. Design Patent D548,142 (“the D142 patent”), in addition to trade dress and unfair competition claims.

The D142 patent claims “the ornamental design for the combined engine guard and highway peg” for motorcycles, shown below.

In its Default Judgment order, the court ordered AMI to pay Lindby Custom compensatory damages of $285,000, and attorneys’ fees and costs of $9,800, in addition to ordering a permanent injunction against continued infringement.

The court’s ruling follows less than two weeks after introduction of a bill in Congress, H.R. 3889, intended to create exceptions to acts of design patent infringement under 35 USC § 271 for certain component parts of motor vehicles, as we previously reported.  In turn, we thought it would be interesting to consider whether the proposed legislation could have affected the Lindby Custom v. AMI Group ruling, had the legislation been in effect.

As a threshold question we considered whether the Lindby case involves:

"a design patent that claims a component part of a motor vehicle as originally manufactured.

H.R. 3889 (emphasis added).  The answer to this question may depend on an issue of statutory construction. 

First, if the clause "as originally manufactured" modifies only the term "a motor vehicle," then the proposed legislation might only apply to design patents that claim parts installed on a motor vehicle as it leaves the manufacturer's assembly line.  Accordingly, under this first interpretation, the proposed legislation might not apply to the D142 patent because there is no evidence that Lindby Custom provided engine guards for "motor vehicle[s] as originally manufactured."

However, in the alternative, if the clause "as originally manufactured" modifies the term "a component part," then the proposed legislation might apply to all motor vehicle component parts, as the component parts themselves are originally manufactured.  Under this second interpretation, the proposed legislation would likely apply more broadly to include design patents for aftermarket parts, such as the D142 patent, even if those parts were never installed on a motor vehicle as part of that motor vehicle's original manufacture.  Thus, under this second interpretation, the proposed legislation may have acted to diminish the damages award in the Lindby case by providing an exception to infringement for acts intended "for the repair of a motor vehicle so as to restore such vehicle to its appearance as originally manufactured."  H.R. 3889.


Nestlé continues Trend of Recent Consumer Products Design Patent Complaints

Continuing a pattern of design patent infringement suits involving consumer products filed in recent months, Nestlé Healthcare Nutrition, Inc. “(Nestlé ) and Gerber Products Company (“Gerber”) sued Mead Johnson & Company, LLC (“Mead Johnson”) in the United States District Court for the District of Delaware on January 26, 2012.

The suit, 1:12-cv-0079, alleges that the sale of certain Mead Johnson bottles infringes Nestlé’s U.S. Design Patent No. D 447,421 (“the ‘421 patent”).  The complaint further alleges unfair competition, trade dress infringement, and various state law causes of action against Mead Johnson.  The ‘421 patent is directed towards an ornamental design for a bottle.  See Fig. 1 to the left. 

The Nestlé complaint states that the patented bottle has been used in its Boost® line of nutritional drinks.  ¶ 14.  Mead Johnson has supplied Nestlé with the products covered by the ‘421 patent.  ¶ 14.  However, Nestlé alleges that Mead Johnson also supplied infringing bottles as private label products to Wal-Mart, Kroger, and Sam’s Club without a license.  ¶ 19.  In an unusual twist, the allegedly infringing products are reportedly marked with the ‘421 patent number.  ¶ 19.

Notably, Mead Johnson had previously sued Nestlé and Gerber in United States District Court for the Southern District of Indiana in August 2011, 3:11-cv-0100, for infringement of U.S. patent no. 7,040,500 entitled “Container and Scoop Arrangement.”  Thus, this month’s Nestlé suit asserting the ‘411 design patent appears to be part of a larger dispute between the companies.

In November 2011, Crocs Inc. (“Crocs”) brought suit against Walgreen Co. in the United States District Court for the District of Colorado, 1:11-cv-02954, alleging infringement of U.S. Patent No. D 610,784 (“the ‘784 patent”) and U.S. patent no. 6,993,858.  The ‘784 patent is directed towards an ornamental design for footwear.  See Fig. 1 to the right. 

The Crocs complaint states that prior to filing suit Crocs sent Walgreens a letter asking that Walgreens cease and desist selling its “Caribbean Cartel” footwear.  ¶ 20.  Crocs had previously asserted other design patents on its footwear as reported, for example, in Crocs Inc. v. Int’l Trade Comm’n., 598 F.3d 1294 (Fed. Cir. 2010). See our prior postThe most recent Crocs suit is an example of the common strategy of asserting design patents in combination with utility patents against an alleged infringer.

Finally, in October 2011, Kohler Co. (“Kohler”) sued Amerisink, Inc. in the United States District Court for the Eastern District of Wisconsin, 11-cv-921, asserting infringement of two design patents, nos. D 510,985 (“the ‘985 patent”) and D 529,147 directed towards ornamental designs for sinks.  See Fig. 1 of the ‘985 patent to the left.  

Kohler asserted that Amerisink infringed these patents through its sale of certain stainless steel sinks.  ¶ 21.  As in the Crocs suit, Kohler reported that it sent Amerisink a cease and desist letter regarding the alleged infringement prior to filing suit.  ¶ 22.

Design patents continue to be an important, though sometimes overlooked, tool in the patent portfolios of many companies, especially those in the consumer products arena.  As with other recent patent design suits, the suits discussed above were brought by American companies.  Whether foreign companies will also choose to assert their own design patents with greater frequency in the future remains to be seen.


Apple v. Samsung: Apple requests Preliminary Injunction against the 10.1N in Germany

Following our prior post regarding Samsung's new Galaxy Tab 10.1, Dow Jones Newswires now reports that Apple has requested a preliminary Injunction against Samsung's revised design. 

A hearing is reportedly scheduled for December 22, 2011.  FOSS Patents provides some Germany-specific insight on this development, and expects the hearing to not only relate to Apple's community design claims, but also Apple's unfair competition claims.