Dr. Martens Kicks Infringers to the Curb

Quarles & Brady LLP

Quarles & Brady LLP

The U.S. District Court for the Northern District of California recently determined that the owner of the iconic Dr. Martens trade dress—a famous design that has been used for more than three decades—was entitled to a permanent injunction against ITX USA for its use of footwear designs that are similar to the overall visual impression of the Dr. Martens trade dress.

Dr. Martens footwear, frequently referred to as “Docs,” has been manufactured and marketed by AirWair International, a wholly-owned subsidiary of Dr. Martens AirWair Group, since 1960. AirWair owns three federal trademark registrations covering various visual features of the Dr. Martens footwear in combination, including yellow stitching in the welt area, a sole edge with two-tone grooves, longitudinal ribbing, and a dark color band over a light color band, and a tab located at the top back heel of the footwear. AirWair also asserted ownership in unregistered trade dress protecting the overall visual impression of the combination of welt stitching, a grooved sole edge, an angled heel, a platform sole, the “Quad” cleat pattern, and a heel loop. The asserted Dr. Martens trade dress is depicted below.

After a five-day jury trial, the jury decisively returned a verdict in favor of AirWair, finding that ITX’s footwear infringed AirWair’s federal trade dress registrations and unregistered trade dress noted above. ITX’s infringing footwear is depicted below.

ITX’s Infringing Footwear

AirWair then moved for a permanent injunction requesting that ITX and its affiliates be permanently enjoined from using the Dr. Martens trade dress or any colorable imitation thereof, including the unregistered trade dress. U.S. District Judge Susan Illston granted AirWair’s motion, holding that: (1) AirWair was entitled to a presumption of irreparable harm, which ITX failed to rebut; (2) monetary damages were inadequate because AirWair had suffered a loss in the exclusivity of its trade dress; (3) ITX will experience little to no hardship so long as ITX does not infringe; and (4) a permanent injunction would not disserve the public interests given the jury’s finding of a likelihood of confusion.

The court tailored the scope of the injunction to include AirWair’s trade dress, colorable imitations, and products confusingly similar to any of AirWair’s protected designs. The court also found that ITX’s affiliates and other related entities could be bound by the injunction and that it was appropriate to include affiliate language in the injunction.

The jury verdict and subsequent grant of injunctive relief comes as a major win for AirWair and can be used as persuasive legal authority to combat future infringement and attacks on the strength of the Dr. Martens brand and trade dress. As the court’s injunction shows, even unregistered trade dress can be a powerful right if owners are careful to police infringers.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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