IP Law Daily, TRADEMARK NEWS: Steven Madden accused of infringing UGG mark and footwear trade dress, (Apr 17, 2024)

By Cheryl Beise, J.D.

Steven Madden Selena shoe design allegedly copies the UGG Jazz trade dress.

Deckers Outdoors Corporation has filed suit against Steven Madden Ltd, accusing it of trade dress and trademark infringement and related claims arising from the defendant’s use of the trademark UGG on its website and the sale of a shoe called the Selena that copies the distinctive trade dress of UGG’s Jazz shoe. According to the complaint, consumers searching for the word UGG on a search bar on the Steven Madden website will return a page with the infringing Selena shoe (Deckers Outdoor Corporation v. Steven Madden, Ltd., filed April 16, 2023).

Deckers Outdoor Corporation markets footwear products under the UGG brand, including a shoe called the “UGG Tazz.” Deckers alleges that Steven Madden is selling a shoe called the “Selena” on its website and in its brick-and-mortar retail stores under the Steven Madden brand that highly resembles the UGG Tazz trade dress (the “Accused Product”). The elements comprising the UGG Tazz trade dress are (a) an embroidered braid around the opening of the upper; (b) a raised prominent seam on the front part of the upper running longitudinally down the center of the upper; (c) a raised and rounded dome shaped toe; (d) brushed suede-like exterior; and (e) a thick, platform outsole. Deckers asserts that the Tazz trade dress has garnered a large amount of media solicitation and the company sold millions of dollars of Tazz products since its introduction in 2021.

The complaint also asserts that Steven Madden infringes the UGG incontestable registered trademark. According to the complaint, the Steve Madden website has a search bar on each product page. When website users type the word “UGG” into a search bar, the user “is automatically redirected to footwear that look confusingly similar and/or nearly identical to authentic UGG® products, including the Accused Product.” The complaint contends that consumers familiar with the UGG brand would mistakenly believe that Sten Madden’s confusingly similar products “are somehow endorsed, sponsored, or affiliated with Deckers.” Deckers accuses Steven Madden of acting in bad faith with the intent to confuse and deceive consumers and trade of the good will of the UGG brand.

The complaint includes claims for trademark infringement under Section 32 of the Lanham Act, false designation of origin and false descriptions under Section 43(a), and trade dress infringement under Section 43(a). It also asserts claims for trade dress infringement and unfair competition under California common law and unfair competition in violation of California Business and Professions Code. Deckers is seeking broad injunctive relief, disgorgement of profits, actual damages, treble damages, punitive damages, costs, and attorney fees.

The case is No. 2:24-cv-03131.

Attorneys: Brent H. Blakely (Blakely Law Group) for Deckers Outdoor Corporation.

Companies: Deckers Outdoor Corporation; Steven Madden, Ltd.

News: Trademark CaliforniaNews