Can a Flip Flop Mompreneur Beat Skechers in a War Over Words?

Maybe. Terri Kelly, a solopreneur and mother of six, launched her terrikelly flip flop business in November 2013, when she couldn’t find minimalistic footwear with the lightweight feel and look of the yoga attire she favored. Kelly adopted “Yoga Pants for Your Feet” as a tagline and trademark to promote her business in January 2014 and was granted a registered trademark for “Yoga Pants for Your Feet” in May 2015. It turns out Skechers was pretty keen on the “Yoga Pants for Your Feet” verbiage, too. In January 2015, the footwear giant launched a series of TV and YouTube commercials, print ads, and social media content using the exact same phrase. The commercials include dialogue from celebrities such as Brooke Burke-Charvet, who says Skechers’ Stretch-Fit shoes are “like ‘yoga pants for your feet.’”

Kelly Asks Skechers to Cease and Desist

Alerted to the ad campaign in March, Kelly had a decision to make. Was she going to roll over and ignore the fact that Skechers was using her trademark to promote its sneakers or fight back? After all, she was a one-woman show with limited resources, and Skechers could afford a lengthy legal battle.

Kelly chose to fight back and sent a cease and desist letter to Skechers in March. When Skechers continued using “Yoga Pants for Your Feet” in its ad campaign and on social media, Kelly made her next move. She filed suit against Skechers U.S.A., Inc. in May, alleging violation of intellectual property rights including trademark infringement, unfair competition, and unjust enrichment.

Skechers Says It’s Prepared to Fight

According to the Times of San Diego, a Skechers’ spokeswoman informed the news organization, “Skechers categorically denies the allegations, and believes this case is nothing more than an attempt to trade on Skechers’ long track record of success. We look forward to vindicating our position in court.”

Skechers’ next move was to file a countersuit against Kelly, seeking to cancel her trademark. The company asserts numerous grounds for cancellation of the registration including that Kelly secured the registration fraudulently, and the registration is void, saying that although the application was filed on the basis of current use of the mark, the mark was not actually in use before the filing date.

The Outcome Could Hinge on Whether “Yoga Pants for Your Feet” Is Merely Descriptive

Skechers further counterclaims and defends its use of “Yoga Pants for Your Feet” based on the company’s belief that the mark is merely descriptive and informational and never should have been registered in the first place. Merely descriptive wording cannot be registered without a showing of secondary meaning and merely informational phrases are not entitled to registration.

If a mark is merely descriptive, it can become distinctive by achieving secondary meaning (i.e., act as a source identifier). Secondary meaning can be established through long-term use or extensive advertising and publicity. For example, the “Best Buy” mark was considered merely descriptive at one point but acquired secondary meaning as a trademark and source identifier and has become well-known through long-term and extensive use and advertising.

While Kelly asserts that “Yoga Pants for Your Feet” has developed secondary meaning in her complaint, will the court buy this argument, especially since Kelly has been using the mark less than two years?

Skechers Use of Identical Words Could Be Seen as Infringing

Skechers also claims that it uses the words “Yoga Pants for Your Feet” in a descriptive manner and not as a trademark, and that the phrase, in any case, is merely descriptive and informational. As evidenced by other cases, this may be easier said than proven.

Trademark protection cases can be very subjective though, because like any lawsuit, they are based on opinions. With trademarks this is especially true, because the parties are considering words, what the words mean, and how the words are used. At first glance as a trademark attorney, I believe Kelly has a viable argument that “Yoga Pants for Your Feet” is suggestive rather than merely descriptive.

A term or phrase is merely descriptive if it merely describes the nature or quality of the relevant goods. A suggestive mark suggests a quality or characteristic of the goods and requires some imagination or thought to reach a conclusion as to the nature of the goods.

In practice, however, making the distinction between the two is arguably one of the most difficult areas of trademark law. While I think Kelly has an argument that “Yoga Pants for Your Feet” is not merely descriptive, Skechers will, of course, present evidence to prove the contrary and could even change this writer’s position.

Skechers May Face Bad Press for Taking On a Mompreneur

One has to wonder why Skechers would chance the bad press by going to battle with this 52-year-old mompreneur, someone very relatable to its target market, who has put her blood and sweat into her small business. Is this a case of David going after Goliath, and Goliath pushing back? And does Goliath have the ammunition to defeat David in this battle?

We see cases where big companies go after small companies that do not have the money to defend his or her case. We also see cases where small companies are looking for deep pockets. Does this case fall into the latter category, as Skechers alleges? Or is it a case of a passionate trademark owner simply protecting what she has worked so hard to create?

Willful Infringement Could Be Costly for Skechers

If this case doesn’t settle, and Kelly prevails, Skechers could be facing a finding of willful infringement given the fact that it received a cease and desist letter but didn’t stop using the mark. Also, it is unclear whether Skechers did its due diligence and was aware of Kelly’s mark prior to using “Yoga Pants for Your Feet,” since it would have undoubtedly uncovered Kelly’s mark.

In fact, Kelly asserts as much in her cease and desist letter, which states, “a cursory Google search reveals multiple references to Ms. Kelly’s products and the YOGA PANTS FOR YOUR FEET trademark.”

If she can prove willful infringement by Skechers, what does this mean for Kelly? The court could award her treble damages, as well as court costs and attorney fees and depending on a number of factors, this could be a hefty amount.

Kelly May Still Prevail, Even If Her Trademark Is Found to Be Invalid

Another plausible scenario that could work in Kelly’s favor would be if the Court finds that the mark was fraudulently obtained and therefore invalid, but rules the mark is not merely descriptive and is protectable. Kelly might be left without a registration, but she can still assert any rights established through her use of the mark against Skechers.

Although a federal trademark registration provides a better basis for asserting rights against another party, rights in the U.S. are based on use, not on registration. So, if Kelly can prove “Yoga Pants for Your Feet” is not merely descriptive and can prove rights based on her use of the mark, David might persevere over Goliath this time around.

Photo Source: Skechers YouTube Channel

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