Crocs Or Not?

What brand is the shoe to the left?

What about the shoe on the right?

The shoe to the left is Loeffler Randall® brand.

The shoe to the right is Skecher® brand.

You probably aren’t alone if you thought both these shoes were Crocs® brand. In fact, Crocs, Inc. is suing Loeffler Randall and Skecher for trademark infringement.

Registration 5149328
Registration 5273875

Crocs Inc. owns more than 30 U.S. trademark registrations, including two for the designs on the shoe. Here are the images and the written descriptions that are part of the registrations:

  • “13 round holes on the horizontal portion of the upper of the shoe”
  • “a textured strip along the vertical portion of the upper having a pattern of 7 trapezoidal openings”

Does that mean the Loeffler Randall shoe isn’t infringing because it has 15 holes? And the Skecher shoe isn’t infringing because it doesn’t have 7 trapezoidal openings?

The defendants will make those arguments but, remember, in order to be infringing, the other shoes don’t have to been an exact match, they only have to be “confusingly similar.” If you and other consumers are likely to think the shoes are Crocs brand shoes, Crocs Inc. could win.

It’s going to be expensive for Crocs Inc. to defend its registrations but, with trademarks, it’s either defend it or lose it. With a ruling in hand, Crocs Inc. can have U.S. Customs stop shipments at the border, making it easier for Crocs to keep the design trademarks strong.

Big thank you to Liz B. for the email that led to this post.

Girl Scouts vs. Boy Scouts

Who gets to use SCOUT for activities for girls?

  • In 1916, Congress formed the “Boy Scouts of America” and granted it the exclusive right to use the trademarks it adopts.[1]
  • In 1950, Congress formed the “Girl Scouts” and granted it the exclusive right to use the trademarks it adopts.
  • In 2017, the BSA starting allowing girls to join to stop the hemorrhaging of their membership.[2] Soon after, the BSA ran an ad campaign using SCOUT ME IN and renamed its scouting program SCOUTS BSA so it didn’t include the word “boy.”[3]

The Girl Scouts has asked a court to rule that BSA’s use of SCOUT to market to girls violates the Girl Scouts’ trademark rights.

The BSA and the Girl Scouts can’t both have exclusive rights to SCOUT, so the rights must be divided between them in some way. This isn’t as unusual as it sounds: Mars owns the exclusive rights to DOVE for chocolate and Conopco Inc. owns the exclusive right to DOVE for soap.[4]

So what rights did Congress actually give each organization?

  • The purpose of the BSA is to “promote . . . the ability of boys . . ..”[5]
  • The purpose of the Girl Scouts is to “promote . . . qualities . . . among girls . . ..”[6]

SCOUT for boys belongs to the BSA. SCOUT for girls belongs to the Girl Scouts. The BSA needs to knock it off.

Shout out to Cassandra G. for bringing this story to my attention.

Big thanks to Liz B. who found the information about the history of the statutes.


[1] The trademark rights for BSA and Girl Scouts, while included in the Trademark Office database, actually stem from acts of Congress and it’s there we need to go to look for answers. The statutes that created the corporations for BSA and the Girl Scouts each granted them the “exclusive right to use emblems, badges, descriptive or designating marks, and words or phrases [it] adopts. 36 U.S. Code §30905 for the BSA. 36 U.S. Code §80305 for the Girl Scouts.

[2] Both the Girl Scouts and the BSA are struggling. The number of kids signing up for scouting was dropping before COVID-19 and went into free fall after. The BSA’s problems are compounded by issues stemming from sexual abuse and homophobia.

[3] Much like KENTUCKY FRIED CHICKEN changed to KFC because “fried” became a negative word and they were tired of being thought of as serving only chicken.

[4] The Trademark Office allows companies to share a trademark in the way BSA and Girl Scouts share SCOUT only in very special circumstances. In this instance, the sharing was created, literally, by acts of Congress and we have to make the best of it.

[5] 36 U.S. Code §30902. “The purposes of the [BSA] are to promote, through organization, and cooperation with other agencies, the ability of boys to do things for themselves and others, to train them in scoutcraft, and to teach them patriotism, courage, self-reliance, and kindred virtues, using the methods that were in common use by boy scouts on June 15, 1916.”

[6] 36 U.S. Code §80302: “to promote the qualities of truth, loyalty, helpfulness, friendliness, courtesy, purity, kindness, obedience, cheerfulness, thriftiness, and kindred virtues among girls, as a preparation for their responsibilities in the home and for service to the community . . ..” The comparison of this to the purpose of the BSA makes me physically ill. Boys are taught courage. Girls are taught obedience. Boys are taught scoutcraft. Girls are taught purity. Boys are taught self-reliance. Girls are prepared for their responsibilities in the home.

Boozemarks

Can you identify your favorite brand of gin just by seeing the bottle from across the bar?

Trademarks exist to help consumers find their favorite brand.

If a consumer’s likely to see your product lined up against competitors on the shelf of a liquor store or bar, you need to find a way to stand out and be visible and memorable in that setting.

The images to the left are just a few of the more than 400 registered trademarks for booze bottle shapes at the U.S. Trademark Office.

Do you recognize Hendricks® and Tanqueray® gin among these bottles?

Other companies use a distinctive cap or stopper to make their product memorable in the milieu where booze regularly competes.

Still others use unusual wrappings or labelings. The red wax that coats the lid and neck of a bottle of Maker’s Mark® is one of the most famous marks in the U.S. Basil Hayden’s® distinctive packaging isn’t quite as famous but easily recognized by its fans.

Finally, there are two, count ’em, two touch marks for alcoholic beverages.

The David Family Group has a registration for the “leather texture wrapping around the middle surface of a bottle of wine.”

Kiku-Masamune Sake Brewing Co., Ltd. has a registered trademark for a highly-memorable “rough wood-like texture and green smooth, bamboo-like texture on a label surrounding a bottle of sake in the shape of a small wooden barrel.”

How does your branding help you stand out where it counts?

Shout out to Rebecca M. for sending me an article that led to this blog post.