Van’s Inc.

recently filed a trade dress infringment lawsuit against Target alleging that Target's Camella Lace-Up Sneaker infringes on Van's Old Skool Shoe design.*
The threshold question is whether the Old Skool Shoe is entitled to trade dress protection.
The sixth factor considers the number and nature of

A SHOE BY ANY OTHER NAME?

similar marks in use on similar goods.
shoe tongue
A Google search shows various brands of skate shoes with
none appearing similar to the design of the Van's shoe.
January 5, 2019 shoe tongue is part of front panel
While the author recognizes that Google is at most a
persuasive "authority," it nevertheless generally portrays
8 pairs of eyelets pull tab the various types of shoes are marketed as skate shoes.
zig-zag stiching The seventh "duPont" factor of the considers the
tongue catcher nature and extent of any actual confusion.
heel panel with front panel
If consumers begin, for example, to refer to the Camella
double stiching
groove Lace-up Sneaker as a "Fake Van's Shoe," this may be
Van's Old Skool shoedouble photo from lawsuit filing

stiching
black & white trim
double stiching
Target Camella Lace Up Sneaker
considered evidence of actual confusion, or potential
confusion at the very least.
traverses width of shoe
The eighth factor considers the length of time during
6 pairs of eyelets
Examination and comparison of the features of each shoe. groove photo from lawsuit filing
and conditions under which there has been
concurrent use of both products without evidence of
The Van’s Old Skool shoe features eight pairs of eyelets (shoelace holes), while the Target actual confusion.
Camella Lace Up Sneaker features only six pairs of eyelets. It appears that the length of time that both brands of shoes
The Old Skool shoe has no tongue catcher, while have been marketed is insufficient to determine whether
the Camella Lace Up Sneaker features a tongue actual confusion exists.
catcher between the fifth pair of eyelets. The ninth factor considers the variety of goods on
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Unlike the Target Camella Lace-Up Sneaker, the Old which a mark is or is not used (house mark, `family'
Skool shoe features no pull tab on the back of the shoe. mark, product mark).
The shoe tongue on the Camella Lace Up Sneaker is part of the front
A Google search shows various brands of skate shoes with
panel of the shoe, while the shoe tongue on the Old Skool Shoe marks appearing on most marketed skate shoes.
appears as a distinct part of the shoe. The tenth "duPont" factor considers the market
The curved mark and stiching featured on the Old Skool Shoe is markedly interface between the products.
different than the mark and stiching on the Camella sneaker. Considering that both products are sold in retail outlets and
through online channels, the degree of marketing interface
The base of the Old Skool shoe features a groove that covers approximately between the two products is higher.
two-thirds of the shoe circumference, while the Camella Lace Up Sneaker
The eleventh factor considers the extent to which the
features a groove that traverses the entire shoe circumference.
owner of the earlier design has a right to exclude others
Unlike the Camella Lace Up Sneaker, the Old Skool shoe features a black and white trim from use of its mark on its goods.
along its circumference. Although the owner of the Van's Old Skool Skate Shoe did
not register its design, it nevertheless holds trademark
A design that affects the use, purpose, cost, or The second factor considers the similarity in nature of the rights based on case law, rather than the Lanham Act,
quality of a product cannot serve as a trademark.** product in question with a product already bearing a prior which provides for greater protection. Given the
trademark. decades-long history of the Old Skool Skate Shoe, Van's
If the court finds that the features of the Old Skool shoe are
Both the Target sneaker and the Van's shoe qualify for would certainly be able to preclude others from using the
functional in nature, the Old Skool shoe will not qualify for
classification as footwear. Both are marketed under the general shoe design or name.
trade dress protection. Van's remaining option would be to
"shoe" category. The twelfth factor considers the extent of potential
apply for design patent protection, a topic beyond the scope
The third factor considers the similarity established, likely-
of this discussion. confusion, whether minimal or substantial, between
to-continue trade channels.
Copyright protection may also be available, but that is the two products.
In this case, both Van's and Target utilizes the same trade
an intriguing discussion for a later time. The potential for one shoe would be mistaken for the other
channels, such as the internet and retail outlets, to market their
If the court finds that the features of the Old Skool shoe are may be minimal due their distinct features.
products.
ornamental or decorative, rather than functional in nature, The fourth factor considers he conditions under which and The thirteenth "duPont" factor considers any other
then Van's would be required to prove that the features of buyers to whom sales are made, i.e. `impulse' vs. careful, established fact probative of the effect of use.
the Old Skool shoe qualify for trade dress protection under sophisticated purchasing. Perhaps, the Camella Lace Up Sneaker is just a shoe by
the duPont 13-factor test.*** If we were discussing a major purchase, such as an automobile any other name. It is important to note that neither the term
An examination and comparison of both products shows or a complex robotic device, we would be able to conclude that or design of the "Old Skool Skate Shoe" is a registered
seven distinct features of the Target Shoe, as discussed a high level of sophistication is involved, as these products trademark.
above. unlikely to be purchased on impulse. This case illustrates the importance of trademark / "trade
The first factor of the duPont test considers the To our more "fashion-oriented" readers, we mean no offense dress" registration is an important first step in product
similarity of the marks in their entireties as to appearance, when we say that shoes are generally bought on impulse. design.
sound, connotation and commercial impression. Shoes in this sense only are a "dime a dozen." Thus, the level In addition to providing a design with an increased level
Ultimately, the consideration here is whether the Target of sophistication involved in the purchase of shoes such as of protection, the the issues of 'trademarkability' and
Camella Lace Up Sneaker is sufficiently distinct in design these is much lower, and the likelihood of confusion would be 'infringement' are determined during the trademark
from the Van's shoe design. consequently be much greater. registration process, as opposed to during a more costly
litigation process, which can take years to resolve. -JMG
Jose Gomez is a trademark attorney licensed to practice law in Washington, D.C. He is admitted
to practice before the United States District Court for the Eastern District of Michigan. José *Vans, Inc.; VF Outdoor, LLC, vs. Target Corporation;
represents clients nationwide in trademark and copyright matters under 5 U.S.C. §500. His Farylrobin, LLC, 8:18-cv-02258 (C.D.Cal.).
diverse background and experience informs his approach to customer service that is based **Traffix Devices, Inc. v. Marketing Displays, Inc.,
on intelligent collaboration and hard work.
532 U.S. 23, 32 (2001).
FOR INFORMATIONAL PURPOSES ONLY. © 2018. The Gomez Law Firm, PLC. All Rights Reserved. ***In re E.I. duPont DeNemours & Co., 476 F.2d 1357, 1361 (1973)