Easy Spirit, LLC v. Skechers U.S.A., Inc.

Background

Easy Spirit sued Skechers under the federal Lanham Act and New York law. It alleged that Skechers infringed Easy Spirit’s registered “Traveltime” trademark and copied the trade dress—the overall appearance and design of a product—of the Traveltime shoe in Skechers’s “Commute” and “Commute Time” shoes. Easy Spirit asserted federal trademark infringement, false designation of origin, New York common-law trademark and trade-dress infringement, and dilution under New York General Business Law § 360-l.

Skechers moved for summary judgment under Federal Rule of Civil Procedure 56. Summary judgment is appropriate when no genuine dispute about a material fact requires a trial and the moving party is entitled to judgment as a matter of law.

Trade-Dress Claims

Easy Spirit claimed protection for a combination of six Traveltime design features, including its slip-on clog-style upper, swirl-shaped midsole, indented lines, contoured midsole and outsole, raised rubber bumper, and four circular heel elements. Because this was a claim based on product design, Easy Spirit had to show that consumers had come to associate that design with Easy Spirit—a concept called acquired distinctiveness or secondary meaning.

The court examined advertising, consumer surveys, media coverage, sales, copying by others, and the length and exclusivity of Easy Spirit’s use. It found that five factors weighed against secondary meaning and only sales success favored Easy Spirit. The court found insufficient evidence connecting Easy Spirit’s overall advertising spending to recognition of the Traveltime design, noted that Skechers’s survey found only 1% of respondents associated the design with one source, and found limited relevant media coverage. The court also found that Easy Spirit had not shown exclusive use because other shoes used most or all of the claimed design elements. Although the record showed sales of at least 396,090 pairs before Skechers introduced the Commute shoe, the court held that sales success alone could not establish secondary meaning.

The court therefore concluded that no reasonable jury could find that the Traveltime trade dress had acquired secondary meaning. It did not decide whether the design was functional or whether the shoe designs were likely to confuse consumers. The court dismissed Easy Spirit’s federal trade-dress claim.

The court also dismissed the New York common-law trade-dress claim. It concluded that, for this product-design claim, Easy Spirit’s failure to show secondary meaning meant that the claimed trade dress was not distinctive and therefore was not protectable. The court rejected Easy Spirit’s argument that alleged intentional copying eliminated the need to prove secondary meaning.

Trademark Claims

Easy Spirit also claimed that Skechers infringed the “Traveltime” word trademark under federal and New York law. Skechers did not dispute the trademark’s validity or incontestable status. The court therefore focused on whether consumers were likely to be confused by “Traveltime” and “Commute Time.”

Applying the relevant likelihood-of-confusion factors, the court found that the strength of the Traveltime mark and the parties’ competition favored Easy Spirit, while the dissimilarity of the marks and the absence of evidence of actual confusion favored Skechers. The court treated the quality factor as neutral and found no need to analyze whether Easy Spirit would later enter a different market. The court also found factual disputes concerning Skechers’s good faith and the sophistication of consumers. In particular, Skechers knew about the Traveltime shoe, changed “Commute” to “Commute Time” seven months after launch, and offered disputed evidence about how that name was selected. The court held that these disputes required a jury to resolve the trademark claims rather than summary judgment.

Dilution Claim

Easy Spirit brought a New York dilution-by-blurring claim involving the Traveltime trademark and trade dress. New York dilution law requires a distinctive mark and a likelihood of dilution, and it requires the marks to be substantially similar—more than merely similar enough to support an ordinary infringement claim.

The court had already found that the Traveltime trade dress lacked distinctiveness. It also concluded that “Traveltime” and “Commute Time” were relatively dissimilar, especially because consumers often saw “Commute Time” together with the Skechers brand name. The court dismissed the New York dilution claim. The court additionally stated that any federal dilution claim raised for the first time in opposition papers would be too late and would fail because the evidence did not show the level of fame required for federal dilution protection.

Disposition

The court granted in part and denied in part Skechers’s motion for summary judgment. Easy Spirit’s federal and New York trademark-infringement claims may proceed to trial. The federal trade-dress, New York common-law trade-dress, and New York dilution claims were dismissed.