## Facts

- L.A. Gear designed and sold women’s and girls’ “Hot Shots” athletic shoes and obtained U.S. Design Patent No. D299,081 covering the shoes’ ornamental design.
- The Hot Shots line was commercially successful, supported by substantial advertising expenditures, and sold primarily in non-discount retail channels at mid-range prices.
- Melville (through Thom McAn and related divisions) sold athletic shoes in discount outlets; Pagoda Trading manufactured and imported shoes sold by Melville.
- Defendants sold multiple shoe models that were substantially similar in appearance to L.A. Gear’s patented design, but displayed defendants’ own trademarks prominently on the shoes.
- L.A. Gear sued for (1) design patent infringement and (2) trade dress infringement/unfair competition under Lanham Act § 43(a) and New York law.
- The district court found design patent infringement, found trade dress infringement and unfair competition, entered injunctive relief and Lanham Act damages, and denied enhanced damages and attorney fees based on a finding of non-willfulness.

## Issues

1. Whether the D’081 design patent was invalid because the shoe design was primarily functional or obvious in view of prior art designs.
2. Whether defendants’ accused shoes infringed the design patent under the ordinary-observer standard, and whether infringement was willful for purposes of enhanced relief.
3. Whether the shoe’s asserted trade dress was protectable and, if so, whether defendants’ sales created a likelihood of consumer confusion under Lanham Act § 43(a) (and related state-law theories).
4. What damages and other monetary remedies were available after accounting for the proper scope of patent and trademark liability.

## Decision

- The court affirmed the design patent’s validity, rejecting functionality and obviousness challenges.
- The court affirmed the finding of design patent infringement as to four accused shoe models.
- The court reversed the district court’s finding of non-willfulness, holding that the record compelled a finding of willful infringement, and remanded for reconsideration of enhanced damages and attorney fees.
- The court reversed trade dress and unfair competition liability as to six shoe models, concluding the § 43(a) claim failed on these facts.
- The case was remanded for reassessment of damages consistent with the rulings.

## Legal Principles

- Design patent validity turns on the overall visual appearance; a design is not unpatentable merely because individual elements serve utilitarian purposes if the overall appearance is primarily ornamental and not dictated by function.
- Design patent obviousness is assessed by the overall visual impression; prior art that includes similar elements does not make a design obvious absent suggestion of substantially the same overall appearance.
- Design patent infringement is measured by the ordinary-observer test, focusing on whether an ordinary observer would find the overall appearance substantially the same.
- Willfulness may be found where copying occurs with notice of patent rights; such a finding can support reconsideration of enhanced damages and attorney fees.
- Trade dress liability under Lanham Act § 43(a) requires likely consumer confusion as to source; prominent use of strong, distinctive trademarks by the accused seller can negate likely confusion even where product designs are similar, particularly when sales occur through different retail channels.

## Conclusion

The Federal Circuit upheld L.A. Gear’s design patent and affirmed infringement, held infringement was willful requiring reconsideration of enhanced remedies, and rejected trade dress/unfair competition liability because prominent, source-identifying branding and differing channels of trade defeated likely confusion.


L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117 (Fed. Cir. 1993)