Footwear brand Dr. Martens sued shoe and accessory retailer Steve Madden Inc. in California federal court on Tuesday alleging infringement of its “distinctive trade dress” of the sole, stitching and other features of its famous chunky boot design.
Dr. Martens, designed, manufactured and marketed by United Kingdom-based AirWair International Ltd., is known for its punk-rock and edgy-looking black boots with a thick sole. But the company says five corresponding trade dress marks of its “iconic” boot design are being ripped off by several models of Steve Madden shoes.
“Steve Madden has copied the Dr. Martens trade dress, and the overall style and configuration of Dr. Martens boots and shoes in a deliberate and calculated attempt to trade upon the popularity and distinctive appearance and design of Dr. Martens footwear,” said the complaint filed in the Northern District of California.
AirWair says Steve Madden has a “pattern and practice” of copying Dr. Martens designs, in particular with four distinct boot styles — “JFunn,” “McBeth,” Macen” and “JPlayy,” identified in exhibits accompanying the complaint.
The company has been making Dr. Martens footwear since 1960, and since 1984, has used a distinct design for the sole, stitching and heel loop of its shoes, according to the complaint.
AirWair cites five specific trade dress marks that set its design apart, all of which were issued to the company between 1997 and 2016. The marks include a patterned line design on the bottom sole of the shoe, a yellow welt stitch around the side of the boot, a two-toned grooved sole edge surrounding the area of the yellow stitch, a ribbed sole edge with a dark color band, and a fabric loop on the back of a boot that has the ribbed sole and welt switching.
The designs qualify as “famous marks” under the standards of intellectual property law, AirWair says, given the designs been used continuously and never abandoned. The company says it celebrated the 50th anniversary of its classic boot design in 2010.
AirWair says Steve Madden’s sales of these products have and will cause confusion between the brands. Using the same designs of the soles, stitching, loops and patterns suggests a sponsorship or affiliation between the brands that doesn’t exist, according to the complaint.
“Steve Madden has no right to use the Dr. Martens trade dress,” it says.
AirWair alleges trademark infringement and dilution under the Lanham Act, as well as federal and state level unfair competition claims. The suit seeks treble damages and attorneys’ fees.
Representatives for the parties didn’t immediately return requests for comment on Tuesday.
The plaintiff Airwair International Ltd. is represented by Marcy J. Bergman, Alexandera C. Whitworth and Katherine E. Green of Bryan Cave LLP.
Counsel for the defendants wasn’t immediately available.
The case is AirWair International Ltd. v. Steve Madden Ltd., case number 3:17-cv-01024 in the U.S. District Court for the Northern District of California.