Vans, Inc., the maker of Vans footwear, recently lost its attempt to dismiss a trademark infringement suit filed against it by AirWair International Ltd. AirWair alleged that Vans’ Gibson line of footwear infringes AirWair’s trademark and trade dress rights in its Dr. Martens line, causing a likelihood of confusion among US consumers. Vans’ Gibson line bears the Vans trade name on the back outer sole edge of the shoe and heel tab, but otherwise has trade dress features allegedly similar to those on Dr. Martens’ shoes and boots — including the familiar yellow welt stitching running around the perimeter of the shoe:
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Indeed, in its opinion, the US District Court for the Northern District of California cited two websites that acknowledged the similarity between Gibson and Dr. Martens — one website stated the Gibson line was “an homage” to Dr. Martens, and the other said the line was “obviously modeled after” Dr. Martens.
According to the allegations in the complaint, 29,000 pairs of Gibson shoes were designed and manufactured by a Vans licensee based in Japan. The line was offered for sale primarily in brick-and-mortar stores in Japan, Korea, Hong Kong, and Taiwan.
Although the events giving rise to the lawsuit — including the manufacture, advertising, and sale of the Gibson line — occurred nearly entirely overseas, the Court ruled that the Lanham Act applied because AirWair adequately alleged an effect on US foreign commerce. AirWair claimed consumers could have purchased the Gibson footwear in Japan and caused its arrival in the United States to AirWair’s detriment. In fact, a blog dedicated to Vans footwear noted that Gibson shoes were available only in Japan and encouraged readers to enlist friends or a service to purchase Gibson shoes from the licensee.
In sustaining AirWair’s complaint, the Court determined that Vans’ links to US foreign commerce were sufficiently strong in relation to those of other countries to justify application of the Lanham Act. The activities of Vans’ licensee were aimed primarily at East Asian commerce, but in an age of frequent intercontinental travel and easy online shopping, Vans and its licensee should have foreseen that Gibson shoes would enter the United States. No related proceedings were pending in Japan, nor do contrary intellectual property laws exist in Japan. On balance, these factors weighed in favor of the extraterritorial application of the Lanham Act.