Knobbe Martens Sports and Gaming Practice co-chair Jonathan Menkes was recently quoted in World Trademark Review discussing a U.S. district court decision finding that certain UGG boot designs lack protectable trade dress due to genericness.
Menkes explained that the ruling in the case, Deckers Outdoor Corporation v. Romeo and Juliette, Inc. et al., spotlights the highly fact‑specific nature of trade dress disputes, particularly where widespread third‑party use raises questions about whether a design functions as a source identifier. While copying can sometimes support infringement claims, Menkes noted that extensive use of similar designs across the market may instead weaken arguments for distinctiveness and secondary meaning: “Widespread third‑party use of similar designs can, in some cases, undermine a brand’s ability to claim that its trade dress serves as a source identifier.”
Menkes also observed that the decision highlights the risks of defining trade dress too broadly in an effort to pursue enforcement against alleged “dupes.” He noted that brand owners should take a strategic approach to trade dress protection, carefully considering enforcement scope, evidentiary support, and timing of registration efforts.
More broadly, Menkes commented that the case reinforces the importance of a coordinated IP strategy for brands that may include trade dress, design patents, and other forms of protection.
Read the full article, along with all of Menkes’ quotes, here. [Subscription required]
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