Vice President Michael Schreck Testifies on Secondary Meaning in Trademark Infringement ITC Hearing

March 2, 2023

Analysis Group was retained by Orrick, Herrington & Sutcliffe LLP on behalf of one of the respondents in an International Trade Commission (ITC) hearing held to determine a trademark infringement claim brought by the footwear company Crocs.

In filing its request for a hearing, Crocs claimed that multiple respondents had violated Section 337 of the Tariff Act of 1930 by importing and selling footwear that allegedly violated registered trademarks tied to certain Crocs shoe designs. The US trademarks at issue related to so-called “3D Marks” comprising textured areas and holes on the upper and front of Crocs’ Classic Clog shoes. Crocs requested that the ITC issue general exclusion orders (GEOs) and cease-and-desist orders to bar the respondents from importing and selling the at-issue products.

An Analysis Group team led by Managing Principal Aaron Yeater worked with Vice President Michael Schreck to prepare and develop expert testimony and a related report. Dr. Schreck analyzed Crocs' advertising and assessed whether Crocs’ marketing practices had established secondary meaning, such that consumers recognized the 3D Marks as an identifier of source. In his finding, the administrative law judge overseeing the hearing cited Dr. Schreck’s testimony in concluding that Crocs’ advertisements did not support a finding of secondary meaning, writing:

Crocs has not continuously and consistently promoted the 3D Marks in its advertisements. [The evidence] also shows that, contrary to Crocs’ assertions, the 3D Marks do not always appear, and certainly do not always prominently appear, in Crocs’ advertisements. The exemplary advertisements also show that the 3D Marks are not visible at virtually any angle. All of this makes it unlikely that Crocs’ advertisements created a mental association in the minds of consumers such that they identify the 3D Marks with Crocs.

After reviewing a wide range of expert testimony, including Dr. Schreck’s, an administrative law judge determined that none of the respondents had infringed on the trademarks in dispute, and none of the claimed trademarks had acquired secondary meaning. In finding that no trademark infringement had occurred, the judge also denied Crocs’ request to halt the importation of the respondents’ at-issue shoes and to enjoin the sales and marketing of those products by retailers and distributors in the US.