Wolverine sues Harbor and Kohl's alleging Merrell-brand patent infringement

In a move that Wolverine Outdoor Group President Jacques Lavertue told SNEWS® was intended to "definitively protect the design patents and brand integrity of the Merrell brand," Wolverine World Wide (NYSE: WWW) filed a patent infringement suit against Harbor Footwear Group and Kohl's (NYSE: KSS).
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In a move that Wolverine Outdoor Group President Jacques Lavertue told SNEWS® was intended to "definitively protect the design patents and brand integrity of the Merrell brand," Wolverine World Wide (NYSE: WWW) filed a patent infringement suit against Harbor Footwear Group and Kohl's (NYSE: KSS).

The federal lawsuit, filed in U.S. District Court of Western Michigan, alleges that "New York-based Harbor Footwear and national retailer Kohl's willfully violated Merrell design patents by copying and selling three of Merrell's more popular styles, including its best-selling Jungle Moc."

According to the court documents, obtained by SNEWS®, Wolverine alleges that Harbor has been manufacturing, selling and marketing a line of footwear products under its GBX brand that are "strikingly and materially similar in appearance to the Merrell Jungle Moc line of products" since at least October 2002. In addition, the court documents allege that Harbor has, again under the GBX brand, been manufacturing, marketing and selling a line of shoes that are "strikingly and materially similar in appearance to the Merrell Jungle Slide line of products" and also the Merrell Winter Moc line of products since at least July 2003.  

"We are not the suing kind," Lavertue said, "but we have not been able to reach a gentleman's agreement. Typically, we find when folks who have come close to infringing on our patents receive notification from us pointing out the product design patents, we reach an agreement, the infringement stops, and everyone is happy."

Lavertue told us that for Merrell, this was also about being very loyal and protective of the company's established specialty retail base.

"We started design patenting eight years ago and we now have 150 current design patents with 120 more design patents pending," said Lavertue. "We have a group that is constantly watching and policing the market, and whenever we see someone that is attempting to liberate styles we have protected, bang, we jump on it.

"We jump on design infringements because it protects the integrity of the brand, and that protects everyone who touches the brand, from our very loyal retail base to our customers."

Design patents are intended to protect the unique look, shape and design aspect of a product that becomes an important competitive advantage for a company. The unique shape of a Coke bottle, currently protected by design patents, would be a perfect example, Lavertue agreed.

Where that becomes so very important to the brand and to its retailers is that if a consumer purchases a product that looks like a well-known product and has a bad experience with it, they may then pass judgment on any product that looks like the one they had a bad experience with, even though that experience was as a result of buying and using a product that was a knock-off.

"It is so very important for us to work diligently to prevent confusion -- consumers associate us with the Jungle Moc and if consumers are not happy with a product they associate with that Jungle Moc design, even if it is not our product, that reflects badly on us," Lavertue said.

SNEWS® View: We are not a court, nor are we a jury, but we have to admit, at first glance, the images Wolverine submitted as exhibits, scans of advertising fliers sent out by Kohl's promoting the Harbor-made shoes, reflect similarities between the pictured shoes and Merrell-brand Mocs that are stunning. Naturally, no case is a slam dunk, even if it may seem so on the surface, and at this point, all the claims are simply allegations. Good for Wolverine/Merrell for taking any stand to protect its brand integrity, because that is only good for the retailers who have been loyal to the brand. Product duplication has become a not-so-laughable dilemma for an increasing number of companies in our industry in recent years. The Asian pipeline connection certainly hasn't helped things.

Why do companies knowingly copy? Money, of course. Though this will be an over-simplification, essentially what happens is a company that specializes in replicating other products buys Brand X's successful product off the shelf, sends it to a second or third tier factory -- more often than not in China these days -- and they take it apart and reverse engineer it. Production costs are stripped out where possible. No money is spent on R&D. And if the company does it right, the product that is a duplicate of Brand X's successful design is assured some commercial success because it is so much cheaper. More often than not, the reason this approach works is that companies such as Merrell, have relatively disciplined distribution policies. So, if a discount store that is refused the opportunity to carry the Jungle Moc wants to carry a product that capitalizes on the Moc's success, it turns to a replicating company that specializes in duplicating successful designs and selling them at discount store prices. Ethical? Of course not. Despicable? Absolutely. Stoppable? Not unless every company, large or small, is willing to invest the time, money and energy into suing every replicator and even then, not unless stores that are refused the opportunity to carry a popular product because of distribution policies simply moves on to other products rather than head immediately to the replicators seeking that Brand X success story at discount prices.

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