What Happened?

Keds, LLC has filed suit against Vans, Inc. in the United States District Court for the District of Massachusetts for trademark infringement, unfair competition, trademark dilution, and breach of contract stemming from the two companies’ use of blue labels on the heels of their shoes.

Details of the Case

Keds owns two trademarks for the blue rectangular labels that it affixes to the heels of its shoes.

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In its complaint against Vans, Keds states that Vans is selling at least 21 types shoes bearing labels confusingly similar to Keds’ trademarks in an effort to trade on the marks’ goodwill. Keds further alleges that Vans is well aware that its designs are infringing. In fact, Vans has been sued by Keds for infringing the blue label trademarks before.

Keds first filed suit against Vans for infringement in December 2011. In August 2012, Keds and Vans entered into a settlement agreement in which Vans agreed not to make or sell footwear that had rectangular labels on the heel in certain shades of blue. Specifically, Vans agreed not to sell shoes with labels in the colors Marazine Blue, Blueprint, or Gentian Violet, or in any color “confusingly similar” to those three colors.

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Keds alleges that despite this agreement, Vans has continued to sell shoes with infringing blue labels. The 21 Vans shoes at issue all have labels on the heel that are at least arguably blue, and they range from shades of blue-grey, to shades of light blue, neon blue, and navy.

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Keds argues that Vans’ continued sale of these shoes constitutes trademark infringement, trademark dilution, unfair competition, and breach of the settlement agreement. In addition, Keds alleges that Vans breached the settlement agreement by providing Keds a false representation and warranty in the agreement as to the number of shoes Vans sold with blue labels prior the 2012 settlement. Keds is asking the court to force Vans to stop using the infringing labels, recall shoes with the infringing blue labels, and pay Keds all of the profits it made from the sale of these shoes, among other things.

Why is This Significant?

This case highlights the fact that companies should be careful when it comes to color and trademarks. There may be a great deal of room for interpretation when it comes to colors that are confusingly similar. In addition, this case demonstrates that settlement agreements between companies can be quite nuanced, and they have the potential to subject companies to causes of action even where there is no trademark infringement.