New Balance sues Michael Kors over 'N' mark shoes

Dive Brief:

New Balance has filed a lawsuit alleging that Michael Kors infringed on the shoe brand's trademarks.
The lawsuit targets Michael Kors' Olympia and Pippin lines of shoes. In its complaint, New Balance alleges a design on the shoe's side is "virtually identical and confusingly similar to the New Balance N Marks."
New Balance is asking a court to force Michael Kors to stop using the design and recall existing shoes, as well as award the company damages and any profits Michael Kors made from the shoes.

Dive Insight:

New Balance is testing its legal hold on the letter "N" in its suit against Michael Kors.

Of course, it is far from the first shoe brand to fiercely guard a trademark design. As the business news site Quartz put it once, Adidas has "sued pretty much everyone who has used stripes," and Crocs recently went after more than 12 companies including Walmart and Hobby Lobby over what it alleged were trademark-infringing designs — to name just a few instances.

In its complaint, New Balance noted that the Michael Kors designer, who lends his name to the eponymous brand, is a fan of New Balance. Among other public statements, the lawsuit cites him telling the magazine Harper's Bazaar, "I probably have a good 15 pairs of New Balance in black, and I don't always wear black."

At issue is New Balance's "N mark," which the company traces back to its 320 shoe model, released in the 1970s. "The shoe was an enormous success," the company said in the lawsuit. "Its release benefitted from two coinciding events: the rising popularity of running, and its selection by Runner's World magazine as the best running shoe in the world."

New Balance argues the shoes are "virtually identical and confusingly similar" to its well-known N mark.

Ever since, the brand has used the mark to identify its shoes. "The designs may vary slightly, but an N has appeared on the side of nearly all New Balance footwear sold for more than forty years," the company said, adding that the N has appeared on more than 1 billion products in the U.S. over time.

New Balance alleges the Michael Kors shoes, while they include the latter's name on the design in question, are destined to confuse customers and degrade New Balance's trademark. Of the Pippin line, New Balance said "consumer confusion is a near certainty because the Michael Kors N design appears in a virtually identical commercial context." A Michael Kors spokesperson did not immediately respond to request for comment.

Moreover, New Balance said both brands often engage in collaborations, and Michael Kors' proclivity for collaborations make it more likely that consumers could be misled into thinking New Balance is involved in the shoes. The shoemaker even speculates that "[h]ad New Balance authorized Defendant to design special edition products, it might have been a highly successful collaboration." Instead of partnering up, the two could be fighting things out in court.

The shoemaker demanded Michael Kors stop using the design and account for sales so far, but, according to New Balance, the company refused to do so.

Unlike New Balance, Michael Kors isn't tied to a single shoe mark. The luxury brand's sprawling assortment accounts for roughly 75% of the revenue its parent, Capri Holdings, makes. (Capri also owns Versace and Jimmy Choo.) Worldwide, Michael Kors pulled in about $4.2 billion in 2020.