IP Law Daily, TRADEMARK NEWS: Skechers contests use of ‘S’ logo design by competitor Steve Madden, (Jun 22, 2023)

By Anne H. Gibson, J.D., LL.M.

A new lawsuit alleges the logo on a new Steve Madden sneaker is “confusingly similar” to and likely to dilute Skecher’s famous “S” mark.

Shoe company Steve Madden has made a “willful, intentional, and malicious effort” to benefit from selling a sneaker that infringes on Skecher’s “S” mark, according to a lawsuit filed by Skechers. The logo on a new Steve Madden sneaker is “similar (if not identical)” to those in Skecher’s family of “S” marks, according to the lawsuit. Skechers filed its complaint against Madden in the federal district court in Los Angeles, alleging trademark infringement, unfair competition, and trademark dilution, among other claims (Skechers U.S.A., Inc. v. Steven Madden, Ltd., June 20, 2023).

The lawsuit centers on the logo used on a new sneaker by Steven Madden, Ltd. and Steven Madden Retail, Inc. (collectively “Madden”), called the “Kennie.” The Kennie has an “S” logo on it, similar in shape and size to some of the “S” logos on the products of Skechers U.S.A. Inc. and Skechers U.S.A. Inc. II (collectively “Skechers”), although tilted in the opposite direction. The style of shoe is also similar to some of those sold by Skechers. The two companies are competitors in the casual and fashion footwear markets. Skechers has over 40 registered trademarks for various “S” marks, and also alleges that it has many unregistered “S” marks.

In support of its argument that Madden’s use of this “S” logo will cause confusion, Skechers points to its long history of using and promoting its logos since the company’s formation in 1992. It argues that its “S” marks have been used so consistently and for such a long time that “consumers in the United States have come to widely recognize not only individual registered and unregistered marks with Skechers, but also to associate solely with Skechers the use of a prominent, stylized ‘S’ on a footwear product that has sizing, proportions and placement similar to those of the ‘S’ Marks.” It cites multiple articles in popular magazines over the past several decades that reference its “S” logo. Skechers also notes that its use of the logo and this recognition predate the use of the similar “S” logo by Madden.

Skechers also emphasizes the effort and expense that it has gone to in its marketing campaigns over the years, and argues that these efforts, combined with high sales, have made its “S” marks “famous” within the meaning of the Lanham Act. “Madden’s use of confusingly similar imitations of the registered and unregistered Skechers ‘S’ Marks (including the family of ‘S’ Marks),” Skechers further argues, “is likely to cause confusion, deception, and mistake by creating the false and misleading impression that Madden’s goods, including the Infringing Madden Shoe, are manufactured or distributed by Skechers, are associated or connected with Skechers, or have the sponsorship, endorsement or approval of Skechers.”

Skechers alleges that these actions by Madden are “intentional, willful, and malicious” attempts to profit from Skechers goodwill, to dilute the strength of its marks, or both, though no specific facts are offered in support of these allegations other than Madden’s offering the Kennie for sale with the relevant “S” logo.

The lawsuit alleges federal trademark infringement, willful infringement of a registered mark, unfair competition, and trademark dilution under the Lanham Act, state law trademark dilution, injury to business reputation, and unfair and deceptive trade practices claims, and common law trademark infringement and unfair competition claims. It seeks orders enjoining Madden from using the “S” mark and selling the Kennie shoes, as well as requiring Madden to deliver any existing Kennie shoes for impoundment and destruction. Further, it seeks an award of Madden’s profits derived from the sale of the Kennie shoes, damages arising from Madden’s use of the “S” mark, and attorney fees and costs. It additionally requests treble damages, exemplary and punitive damages, and enhanced profits. Finally, Skechers seeks prejudgment and post-judgment interest on all monetary awards.

The case is No. 2:23-cv-04869.

Attorneys: Daniel M. Petrocelli (O’Melveny & Myers LLP) for Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II.

Companies: Skechers U.S.A., Inc.; Skechers U.S.A., Inc. II; Steven Madden, Ltd.; Steven Madden Retail, Inc.

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