Adidas America, Inc. v. Skechers USA, Inc.
890 F.3d 747
9th Cir.2018Background
- adidas sued Skechers seeking a preliminary injunction to stop sale of two shoes: the Onix (alleged to copy Stan Smith trade dress) and the Cross Court (alleged to infringe/dilute the Three-Stripe trademark).
- Stan Smith: long-used, highly promoted white leather tennis shoe with green heel patch, perforated three-stripe pattern; adidas presented sales, advertising, celebrity placement, and media coverage to show distinctiveness and secondary meaning.
- Three-Stripe: federally registered, heavily promoted trademark integral to adidas branding; parties have prior litigation history and Skechers previously acknowledged adidas’s ownership of the mark.
- District court granted adidas a preliminary injunction on both shoes, finding adidas met all Winter factors (likelihood of success, irreparable harm, balance of equities, public interest).
- Ninth Circuit: affirmed injunction as to Onix/Stan Smith trade dress (found secondary meaning, likelihood of confusion, irreparable harm); reversed injunction as to Cross Court/Three-Stripe for lack of evidence of irreparable harm, though it agreed adidas likely would succeed on merits of infringement and dilution.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether adidas likely to succeed on trade dress infringement for Onix (Stan Smith) | Stan Smith trade dress is nonfunctional, has secondary meaning, and Onix creates likelihood of consumer confusion | Onix differences and Skechers’ branding defeat confusion | Affirmed: likelihood of success—trade dress has secondary meaning; Sleekcraft factors support confusion |
| Whether adidas likely to succeed on trademark infringement/dilution for Cross Court (Three-Stripe) | Three-Stripe is famous/strong; Cross Court is similar; Skechers intended to trade on adidas’s mark | Differences in stripe design and presence of Skechers logo reduce confusion; metadata use not probative of intent to infringe | Majority: Affirmed likelihood of success on infringement and dilution (marks strong, similarity, intent) |
| Whether adidas showed irreparable harm from Onix sales | Post-sale confusion and loss of control over Stan Smith’s reputation and goodwill would cause irreparable injury | No adequate showing; monetary damages could compensate | Affirmed: district court did not clearly err—adidas showed irreparable harm (marketing control, scarcity, consumer survey evidence) |
| Whether adidas showed irreparable harm from Cross Court sales | Loss of control over Three-Stripe and post-sale confusion/brand dilution would cause irreparable injury | adidas failed to present concrete evidence that Cross Court would cause irreparable harm (employee testimony insufficient, no proof Skechers viewed as lower-quality by consumers) | Reversed: majority held insufficient evidence of irreparable harm for injunction as to Cross Court (Herb Reed standard); concurrence dissented on this point |
Key Cases Cited
- Winter v. Natural Res. Def. Council, 555 U.S. 7 (2008) (standard for preliminary injunctions: likelihood of success, irreparable harm, balance of equities, public interest)
- AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979) (Sleekcraft factors for likelihood of confusion)
- Art Attacks Ink, LLC v. MGA Entm’t Inc., 581 F.3d 1138 (9th Cir. 2009) (trade dress elements: nonfunctionality, secondary meaning, likelihood of confusion)
- Herb Reed Enters., LLC v. Fla. Entm’t Mgmt., 736 F.3d 1239 (9th Cir. 2013) (plaintiff seeking injunction must present evidence of likely irreparable harm; presumption from likelihood of success no longer automatic)