On August 20, 2013, Marc Joseph NY, Inc. (Marc Joseph) filed an action before the US District Court for the Eastern District of New York against C. & J. Clark America, Inc. (Clarks) for trademark infringement and unfair competition of its “Cypress Hill” moccasin design.

Founded in 2006 by father and son team Marc and Joseph Antebi, Marc Joseph is an international footwear designer selling a variety of shoe styles, including a moccasin under the model name Cypress Hill. The Cypress Hill moccasin features a number of design elements, such as metal studded shoelace tassels, characteristic hand-stitching, patterned rubber soles, a rubber name plate on the exterior back of the heels, artistically designed fabrics and leather, and stitching detail on the arch.

Clarks is a leading international fashion designer of women’s and men’s footwear focused on comfort. As set forth in the complaint, in 2012 or 2013 Clarks began to sell a women’s moccasin under the model name “Dunbar Racer” that incorporated each of the unique design elements in the Marc Joseph’s Cypress Hill shoe. According to Marc Joseph, these sales have resulted in significant consumer confusion, lost sales, and “at least one website…that tells consumers…to purchase [Clarks’] product instead due to the lower price.” Upon learning of the Dunbar Racer model, Marc Joseph sent a letter to Clarks in January 2013, providing written notice of infringement. Unable to resolve the dispute, Marc Joseph filed the instant action.

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Marc Joseph has asked the Court to find that Clarks’ sale of the Dunbar Racer model, which incorporates substantially the same elements as those in the Cypress Hill model, constitutes trade dress infringement, dilution, unfair competition, and state unfair trade practices. Marc Joseph has requested injunctive relief as well as damages.

In the highly competitive fashion industry, designers are increasingly taking steps to protect their product designs, particularly for high-sale items. While trade dress law provides some protection for fashion designs, this protection is limited and only extends to non-functional designs that have acquired trademark significance.