United States Shoe Corp. v. Brown Group, Inc.
1990 U.S. Dist. LEXIS 5639, 15 U.S.P.Q. 2d (BNA) 1138, 740 F. Supp. 196 (1990)
Rule of Law:
The fair use doctrine, under Section 33(b)(4) of the Lanham Act, protects a party from trademark infringement claims when it uses a descriptive term, otherwise than as a trade or service mark, fairly and in good faith only to describe its goods or services, even if the descriptive term has acquired secondary meaning for another product.
Facts:
- In August 1987, United States Shoe Corp. (U.S. Shoe) began selling walking shoes under the Easy Spirit trademark.
- Around October 1988, U.S. Shoe introduced a line of comfortable women's dress pumps under the Easy Spirit trademark, designed to incorporate comfort elements of walking shoes.
- U.S. Shoe heavily promoted its Easy Spirit pumps using the slogan and musical jingle, 'Looks Like a Pump, Feels Like a Sneaker,' spending over nine million dollars on advertising in 1988 and 1989, which led to dramatic sales increases.
- Brown Group, Inc. manufactures the NaturalSport line of walking shoes and the Townwalker, a competing comfortable women’s dress pump.
- In mid-1988, Brown Group retained an advertising agency, D'Arcy, Masius, Benton & Bowles, to develop a campaign for the Townwalker, with the core concept of 'a sneaker in a pump.'
- Brown Group was aware of U.S. Shoe’s slogan and rejected some early ad proposals for Townwalker due to their similarity to U.S. Shoe's advertising.
- Brown Group ultimately selected a print advertisement for the Townwalker pump featuring the headline, 'Think Of It As A Sneaker With No Strings Attached,' and the phrase, 'And when we say it feels like a sneaker, we’re not just stringing you along,' while prominently displaying its NaturalSport logo and 'Walk Our Way... From Naturalizer.'
Procedural Posture:
- United States Shoe Corp. filed a lawsuit asserting trademark violation and unfair competition against Brown Group, Inc.
- U.S. Shoe sought a preliminary injunction to bar Brown Group from using the phrase 'feels like a sneaker' in its advertising.
- An evidentiary hearing was held on the submission for the preliminary injunction.
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Issue:
Does a competitor's use of a descriptive phrase like 'feels like a sneaker' to advertise its women's dress pumps constitute trademark infringement under the Lanham Act, when a rival company has already established secondary meaning for a similar slogan, 'Looks Like a Pump, Feels Like a Sneaker,' through extensive advertising?
Opinions:
Majority - LEVAL, District Judge
No, a competitor's use of a descriptive phrase like 'feels like a sneaker' does not constitute trademark infringement under the Lanham Act, even if a rival company's similar slogan has acquired secondary meaning, because such use falls within the fair use defense if it is descriptive of the product's virtues and not used as a source identifier. The court found that Brown Group's use of 'feels like a sneaker' was descriptive of a virtue of its Townwalker shoe, claiming it incorporated the comfort of athletic shoes, and was not used as a trademark to indicate origin. The NaturalSport logo and slogan 'Walk Our Way... From Naturalizer' performed the function of identifying the source. The court emphasized that the purpose of trademark law is to prevent confusion as to the origin of products, not to grant exclusive rights over descriptive claims about product features. While U.S. Shoe may have established an association between its slogan and its product, allowing it to monopolize an essentially descriptive phrase would unjustly deprive society of useful information about competing products. The court also determined that U.S. Shoe had not demonstrated a sufficient likelihood of confusion among consumers, noting that consumers are likely to understand descriptive advertising as claims about product features rather than identifiers of source. A consumer survey showing that Brown Group's ads 'remind' consumers of U.S. Shoe's ads was deemed insufficient to prove actual source confusion. The court further pointed out that Brown Group's ad prominently displayed its own distinctive brand name and slogan, differentiating it from U.S. Shoe's advertising.
Analysis:
This case reinforces the critical balance in trademark law between protecting a mark owner's investment in a descriptive term that has acquired secondary meaning and preserving the public's right to use descriptive language to describe its own products. It clarifies that even if a descriptive term has achieved secondary meaning, its use by a competitor is permissible under the fair use doctrine as long as it genuinely describes a feature of the competitor's product and is not used as a brand identifier. The ruling emphasizes that the likelihood of confusion must be about the source of the goods, not merely an association or reminder of a competitor's advertising theme. This helps prevent overreach in trademark protection, ensuring that common descriptive phrases remain available for all businesses to communicate product attributes.
