In the latest phase in a case involving “copycat” footwear, Nike has won. Judge Mark Scarsi of the United States District Court for the Central District of California refused to dismiss Nike’s trademark infringement, false designation of origin, and unfair competition claims against John Geiger Collection in connection with the Los Angeles-based company’s attempt to “capitalise on the strength and fame of Nike and its Air Force 1 (“AF1″) by making, promoting, advertising, marketing, and selling footwear bearing the AF1.”
It filed an additional action in August, adding John Geiger as a defendant to the already-existing trademark suit.
Nike claimed that Geiger has taken “systematic steps in an attempt to falsely associate [its] infringing products with Nike,” and has “attempted to capitalise on Nike’s valuable reputation and customer goodwill” by using its Dunk and AF1 trade dress, as well as its iconic swoosh logo, “in a manner that is likely to cause consumers and potential customers to believe that the infringing products are manufactured by Nike.”
Geiger filed a motion to dismiss in response to Nike’s decision to join the La La Land lawsuit as a defendant, arguing that the Beaverton, Oregon-based sportswear giant has failed to establish the critical element of whether consumers are likely to be confused about the nature of Geiger’s “lookalike” sneakers, and urging the court to dismiss Nike’s claims against it as a result.
Judge Scarsi granted Geiger’s petition to dismiss after Nike objected, finding that Nike adequately presented its allegations. To begin, Geiger claims that Nike failed to make a viable trademark infringement claim because “the trade dress elements that Nike claims Geiger infringed – things like the stitching that holds the sneaker together – are primarily functional, and lack the distinctiveness required to obtain a trade dress registration in the first place.”
Geiger’s claim that the AF1 trade dress “encompasses functional elements” – and thus cannot serve as a trademark – “because each of the elements is functional” is either “unsupported or based on extraneous evidence” that does not appear in the complaint or is “not fairly incorporated in the complaint,” the court concluded. Geiger also “does not explain why the various pieces of the AF1 trade outfits cannot be ‘integrated into a non-functional aesthetic totality.” Judge Scarsi, on the other hand, believes Nike has sufficiently pleaded that “the whole composition of the AF1 footwear is nonfunctional.”
According to the court, despite Geiger’s claims to the contrary, “the appearance of the Swoosh mark on AF1 shoes does not disprove [its] accusations” that the AF1’s configuration has secondary meaning, allowing it to function as a trademark. Nike cited “promotion of the AF1 shoes, extensive sales of these shoes, and recognition of these shoes in the broader community” in its revised complaint, which the court found are “enough facts to constitute… the secondary meaning requirement ‘plausible on its face.'”