(Adds court vote tallies, Adidas comment, scheduled trial, paragraphs 2-6)
By Jonathan Stempel
May 10 (Reuters) - A U.S. appeals court on Thursday said Adidas AG can protect its famous Stan Smith tennis shoe against an alleged Skechers USA Inc knockoff, but that Skechers could sell another shoe mimicking Adidas’ familiar “three-stripe” design.
By a 3-0 vote, the 9th U.S. Circuit Court of Appeals upheld a preliminary injunction barring Skechers from selling its Onix shoe, which Adidas said looked like its white Stan Smith shoe, its all-time best-seller with more than 40 million pairs sold.
The same panel, in a 2-1 vote, also reversed a similar injunction barring Skechers from selling its Cross Court shoe, which has three stripes on its side, finding no proof Adidas would suffer irreparable harm.
Adidas and Skechers face a scheduled trial on June 4 before U.S. District Judge Marco Hernandez in Portland, Oregon, who had issued an injunction covering both Skechers shoes in February 2016, court records show. The appeals court sat in Portland.
In a statement, Adidas said “we will not stand by and allow others to blatantly copy our products,” and that it was “committed to bringing a complete end to Skechers’ pattern of unlawful conduct” at trial.
Skechers did not immediately respond to requests for comment.
The lawsuit is one of many by footwear makers seeking to protect their patent and trademark rights.
Many are filed by companies such as Adidas against companies such as Skechers whose products sell for lower prices.
Adidas has sued Skechers several times in the last two decades for alleged infringement of its three-stripe trademark.
In Thursday’s decision, Circuit Judge Jacqueline Nguyen said the Stan Smith, named for the early 1970s American tennis star, has enjoyed “tremendous commercial success and market recognition,” and Adidas might face irreparable harm if similar shoes flooded the market.
She also said evidence suggested that Skechers intended to confuse consumers by creating the “nearly identical” Onix, and then directing consumers who searched online for “adidas stan smith” to the Onix website.
In contrast, Nguyen said Adidas failed to show that consumers would associate it with Skechers’ Cross Court, causing the dilution of Adidas’ reputation as a “premium” brand.
Circuit Judge Richard Clifton would have upheld the entire injunction.
The case is Adidas America Inc et al v Skechers USA Inc, 9th U.S. Circuit Court of Appeals, No. 16-35204. (Reporting by Jonathan Stempel in New York; Editing by David Gregorio)