Are widely used features in a product entitled to trade dress protection?
The answer to that question has been narrowed considerably, at least for elements widely used in the marketplace, by a recent court ruling in a case brought on by Deckers Outdoor Corp. against Last Brand Inc., doing business as Quince. Quince is a direct-to-consumer retailer known for selling dupes of designer looks at lower prices while promising similar or comparable quality as the original.
Deckers filed its lawsuit in 2023, alleging infringement of three Ugg shoes based on trade dress, as well as one patent claim. It said Quince’s Australian Shearling Mini Boot infringes on the Ugg Classic Ultra Mini trade dress and its U.S. Patent No. D927,161, and that its Australian Shearling Button Boot infringes on its Bailey Button Boot trade dress and the Australian Shearling Clog slipper infringes its Tasman trade dress.
Deckers’ asked for summary judgment on its federal and state trade dress claims, while Quince sought a partial summary judgment on the trade dress claims. Deckers argued that its trade dresses are “nonfunctional,” and that none of the trade dresses provide a utilitarian advantage over another boot or clog design in the market. It also noted that many other designs exist as alternatives. Decker also said patents it owns for its Mini and Bailey Button shoes are presumptive evidence of nonfunctionality.
Because federal district court Judge Araceli Martínez-Olguíne in the Northern District of California found that a trade dress with “either utilitarian or aesthetic functionality cannot be protected by trademark law,” Deckers’ summary judgment motion on state and federal trade dress claims — the standard for trade dress infringement is the same under both state and federal law — failed because it didn’t meet the burden of “showing aesthetic nonfunctionality,” something that Deckers didn’t address in the case. A summary judgment motion is filed when there is a claim that there are no material facts in dispute and the matter can be disposed of without a trial based on evidence and paperwork filed in the case.
In determining Quince’s motion for partial summary judgment, the federal judge found that trademark law does not protect generic trade dress. She also determined that Deckers failed to prove nongenericness. Because Quince showed that there are other brands that sell a similar ankle-high sheepskin boot, including seam placements, like the Mini and moccasin and clog slippers similar to the Tasman, the dupes retailer was granted summary judgment on its “genericness defenses” again Deckers’ trade dress infringement claims.
The case is still on the federal court’s docket on the Mini Boot patent claim, as well as a trade dress claim involving the Bailey Button boot on a determination on functionality. In the patent claim, Quince tried to assert that Deckers’ patent is invalid because it is functional and indefinite. But the judge said patents are entitled to a presumption of validity, and that it can be overcome “only by clear and convincing evidence.”
Executives for Deckers did not return a request for comment by press time.