FOR PUBLICATION

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

ADIDAS AMERICA, INC., a Delaware 

corporation; ADIDAS AG; ADIDAS 

INTERNATIONAL MARKETING B.V., a 

foreign entity,

Plaintiffs-Appellees,

v.

SKECHERS USA, INC., a Delaware 

corporation,

Defendant-Appellant.

No. 16-35204

D.C. No.

3:15-cv-01741-

HZ

OPINION

Appeal from the United States District Court

for the District of Oregon

Marco A. Hernandez, District Judge, Presiding

Argued and Submitted October 7, 2016

Portland, Oregon

Filed May 10, 2018

Before: Diarmuid F. O’Scannlain, Richard R. Clifton,

and Jacqueline H. Nguyen, Circuit Judges.

Opinion by Judge Nguyen;

Partial Concurrence and Partial Dissent by Judge Clifton
2 ADIDAS AMERICA V. SKECHERS USA

SUMMARY*

Lanham Act / Preliminary Injunction

The panel affirmed in part and reversed in part the 

district court’s preliminary injunction prohibiting Skechers 

USA, Inc., from selling shoes that allegedly infringe and 

dilute adidas America, Inc.’s Stan Smith trade dress and 

Three-Stripe mark.

Affirming in part, the panel held that the district court 

did not abuse its discretion in issuing the preliminary 

injunction as to adidas’s claim the Skechers’s Onix shoe 

infringed on adidas’s unregistered trade dress of its Stan 

Smith shoe. The panel concluded that adidas was likely to 

succeed on the merits of this claim because the trade dress 

was nonfunctional, the trade dress had acquired secondary 

meaning, and there was a substantial likelihood of confusion 

between the parties’ products. In addition, the district court 

did not clearly err in finding a likelihood of irreparable harm 

to the Stan Smith.

Reversing in part, the panel held that the district court 

erred in issuing a preliminary injunction as to adidas’s claim 

that Skechers’s Cross Court shoe infringed and diluted its 

Three-Stripe mark. The panel held that the district court did 

not err in finding that adidas showed a likelihood of success 

on its trademark infringement and trademark dilution claims. 

Nonetheless, the district court abused its discretion in issuing 

 * This summary constitutes no part of the opinion of the court. It 

has been prepared by court staff for the convenience of the reader.
ADIDAS AMERICA V. SKECHERS USA 3

the preliminary injunction because adidas did not show that 

it would be irreparably harmed from sale of the Cross Court.

Concurring in part and dissenting in part, Judge Clifton 

wrote that the preliminary injunction should be affirmed in 

full. Judge Clifton disagreed with the majority’s reversal of 

the preliminary injunction as to the Cross Court shoe on the 

ground that there was not evidence to support the district 

court’s determination that adidas was likely to suffer 

irreparable injury.

COUNSEL

Jonathan Hacker (argued), O’Melveny & Myers LLP,

Washington, D.C.; Jordan Raphael, Jeffrey A. Barker, Mark 

A. Samuels, and Daniel M. Petrocelli, O’Melveny & Myers 

LLP, Los Angeles, California; for Defendant-Appellant.

Richard Charles Henn Jr. (argued) and Charles H. Hooker 

III, Kilpatrick Townsend & Stockton LLP, Atlanta, Georgia; 

Adam H. Charnes, Kilpatrick Townsend & Stockton LLP, 

Dallas, Texas; for Plaintiffs-Appellees.
4 ADIDAS AMERICA V. SKECHERS USA

OPINION

NGUYEN, Circuit Judge:

Skechers USA, Inc. appeals the district court’s issuance 

of a preliminary injunction prohibiting it from selling shoes 

that allegedly infringe and dilute adidas America, Inc.’s Stan 

Smith trade dress and Three-Stripe trademark. We hold that 

the district court did not abuse its discretion in issuing the 

preliminary injunction as to adidas’s claim that Skechers’s 

Onix shoe infringes on adidas’s unregistered trade dress of 

its Stan Smith shoe. We conclude, however, that the district 

court erred in issuing a preliminary injunction as to adidas’s 

claim that Skechers’s Cross Court shoe infringes and dilutes 

its Three-Stripe mark. Accordingly, we affirm in part and 

reverse in part.

I.

FACTUAL BACKGROUND

adidas is a leading manufacturer of athletic apparel and 

footwear. Skechers is a footwear company that competes 

with adidas in the active footwear and apparel market. 

Skechers has grown to become the second largest footwear 

company in the United States, ahead of adidas and behind 

only Nike.

The Stan Smith has become one of adidas’s most 

successful shoes in terms of sales and influence since its 

release in the 1970s. Deemed “[t]he favorite shoe of 

[fashion industry] insiders like designer Raf Simons and 

Marc Jacobs” by The Wall Street Journal and the “ultimate 

fashion shoe” by i-D magazine, the Stan Smith has received 

extensive media coverage and been featured in such print 

and online publications as Time, Elle, InStyle, and Vogue. 
ADIDAS AMERICA V. SKECHERS USA 5

The Stan Smith also has frequently appeared on lists of the 

most important or influential sneakers of all time and has 

earned industry accolades such as Footwear News’s 2014 

“Shoe of the Year.” That same year, adidas announced that 

the Stan Smith had become its top-selling shoe of all time, 

selling more than 40 million pairs worldwide.

adidas is also known for its Three-Stripe mark, which has 

been featured on its products for many years as part of its 

branding strategy and for which it owns federal trademark 

registrations. adidas claims to earn several hundred million 

dollars in annual domestic sales of products bearing the 

Three-Stripe mark. adidas advertises the Three-Stripe mark 

in print publications, on television, and in digital media and 

promotes it through celebrity endorsements, sporting events 

sponsorships, and athletic partnerships.

The parties have a history of trademark litigation that has 

previously resulted in Skechers acknowledging that “adidas 

is the exclusive owner” of the Three-Stripe mark and 

agreeing not to use it or any other protected mark 

“confusingly similar thereto.” Despite the agreement, adidas 

has sued Skechers several times in the last twenty years for 

infringement of its Three-Stripe trademark.1

 1 Skechers’s unopposed motion for judicial notice is granted.
6 ADIDAS AMERICA V. SKECHERS USA

adidas filed the present lawsuit against Skechers on 

September 14, 2015, alleging, among other things, that 

Skechers’s Onix shoe infringes on and dilutes the 

unregistered trade dress of adidas’s Stan Smith shoe (both 

pictured below).

adidas further alleges that Skechers’s Relaxed Fit Cross 

Court TR (pictured below) infringes and dilutes adidas’s 

Three-Stripe trademark, in violation of 15 U.S.C. 

§ 1125(a), (c).
ADIDAS AMERICA V. SKECHERS USA 7

adidas filed a motion for preliminary injunction to 

prohibit Skechers from manufacturing, distributing, 

advertising, selling, or offering for sale the Onix and Cross 

Court. The district court granted adidas’s motion and issued 

the preliminary injunction, finding that adidas established all 

the Winter factors. See Winter v. Nat. Res. Def. Council, 

Inc., 555 U.S. 7, 20 (2008) (“A plaintiff seeking a 

preliminary injunction must establish that he is likely to 

succeed on the merits, that he is likely to suffer irreparable 

harm in the absence of preliminary relief, that the balance of 

equities tips in his favor, and that an injunction is in the 

public interest.”).

Skechers timely appealed.

II.

STANDARD OF REVIEW

We review the district court’s issuance of a preliminary 

injunction for an abuse of discretion. See Marlyn 

Nutraceuticals, Inc. v. Mucos Pharma GmbH & Co., 

571 F.3d 873, 876 (9th Cir. 2009). “A district court abuses 

its discretion in issuing a preliminary injunction if its 

decision is based on either an erroneous legal standard or 

clearly erroneous factual findings . . . .” Negrete v. Allianz 

Life Ins. Co. of N.A., 523 F.3d 1091, 1096 (9th Cir. 2008). 

“The legal issues underlying the injunction are reviewed de 

novo because a district court would necessarily abuse its 

discretion if it based its ruling on an erroneous view of law.” 

GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1204 

(9th Cir. 2000) (internal quotation marks omitted). By 

contrast, the district court’s factual findings are reviewed for 

clear error. See Lahoti v. VeriCheck, Inc., 586 F.3d 1190, 

1195–96 (9th Cir. 2009).
8 ADIDAS AMERICA V. SKECHERS USA

III.

ANALYSIS

Skechers contests only two of the factors under Winter, 

specifically, the district court’s findings that adidas showed 

a likelihood of success on the merits and irreparable harm. 

Because the analysis for Skechers’s Onix and Cross Court 

shoes differ, we take them each in turn.

A. Skechers’s Onix and adidas’s Stan Smith

i. Likelihood of Success on the Merits

Skechers challenges the district court’s finding that 

adidas demonstrated a likelihood of success on its claim that 

Skechers’s Onix shoe infringes on and dilutes adidas’s 

unregistered Stan Smith trade dress.

“Trade dress protection applies to ‘a combination of any 

elements in which a product is presented to a buyer,’ 

including the shape and design of a product.” Art Attacks 

Ink, LLC v. MGA Entm’t Inc., 581 F.3d 1138, 1145 (9th Cir. 

2009) (quoting 1 J. Thomas McCarthy, McCarthy on 

Trademarks and Unfair Competition § 8:1 (4th ed. 2008)).2 

To prove infringement of an unregistered trade dress, “a 

plaintiff must demonstrate that (1) the trade dress is 

nonfunctional, (2) the trade dress has acquired secondary 

meaning, and (3) there is a substantial likelihood of 

 2 adidas defines its Stan Smith trade dress as having: (1) “a classic 

tennis-shoe profile with a sleek white leather upper”; (2) “three rows of 

perforations in the pattern of” adidas’s Three-Stripe mark; (3) “a defined 

stitching across the sides of each shoe,” (4) “a raised mustache-shaped 

colored heel patch, which often is green”; and (5) “a flat tonal white 

rubber outsole.”
ADIDAS AMERICA V. SKECHERS USA 9

confusion between the plaintiff’s and defendant’s products.” 

Id. Skechers contests only the latter two elements.

A trade dress has acquired secondary meaning when 

consumers associate the design features with a particular 

producer. Fleischer Studios, Inc. v. A.V.E.L.A., Inc., 

654 F.3d 958, 967 (9th Cir. 2011) (citation omitted). 

“Secondary meaning and likelihood of buyer confusion are 

separate but related determinations. . . .” Levi Strauss & Co. 

v. Blue Bell, Inc., 632 F.2d 817, 821 (9th Cir. 1980). Some 

of the relevant factors for determining secondary meaning 

include the exclusivity, manner, and length of use of the 

trade dress, the amount and manner of advertising, the 

amount of sales, and proof of intentional copying by the 

defendant. Art Attacks, 581 F.3d at 1145.

The district court’s finding that the Stan Smith has likely 

acquired secondary meaning is supported by ample evidence 

in the record. The evidence showed that adidas has used the 

Stan Smith trade dress exclusively since the early 1970s, 

expended considerable capital and human resources to 

promote the shoe, and reaped significant but difficult-toquantify value from placing the Stan Smith with celebrities, 

musicians, athletes, and other “influencers” to drive 

consumer hype and recognition of the trade dress—which, 

in 2014, became adidas’s top selling shoe of all time with the 

40 millionth pair sold. See Transgo, Inc. v. Ajac 

Transmission Parts Corp., 768 F.2d 1001, 1016 (9th Cir. 

1985) (finding evidence of sales, promotional efforts, and 

duration of exclusive use indicative of secondary meaning). 

Also indicative of secondary meaning is the considerable 

amount of unsolicited media coverage praising the Stan 

Smith’s influence and iconic status as one of the most 

famous sneakers of all time. See Golden Door, Inc. v. 

Odisho, 646 F.2d 347, 350–51 (9th Cir. 1980) (“The district 
10 ADIDAS AMERICA V. SKECHERS USA

court’s finding that a secondary meaning has attached is 

supported by evidence of the extensive media coverage

. . . .”).

Skechers’s own conduct also supports the district court’s 

finding. “[P]roof of copying strongly supports an inference 

of secondary meaning.” Vision Sports, Inc. v. Melville 

Corp., 888 F.2d 609, 615 (9th Cir. 1989). Skechers placed 

metadata tags on its website that directed consumers who 

searched for “adidas Stan Smith” to the page for the Onix 

shoe. “Using another’s trademark in one’s metatags is much 

like posting a sign with another’s trademark in front of one’s 

store.” Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp., 

174 F.3d 1036, 1064 (9th Cir. 1999). We agree with the 

district court that “the only reason ‘adidas Stan Smith’ is a 

useful search term is that consumers associate the term with 

a distinctive and recognizable shoe made by adidas.” 

Therefore, the district court did not clearly err by finding that 

the Stan Smith had acquired secondary meaning.

We turn next to the likelihood of confusion between the 

shoes. This factor turns on whether a reasonably prudent 

consumer would be confused about the source of the goods 

bearing the marks. Dreamwerks Prod. Grp., Inc. v. SKG 

Studio, 142 F.3d 1127, 1129 (9th Cir. 1998). “Likelihood of 

confusion in the trade dress context is evaluated by reference 

to the same factors used in the ordinary trademark context[:]

strength of the trade dress, similarity between plaintiff’s and 

defendant’s trade dress, evidence of actual confusion, 

marketing channels used, type of goods and likely degree of 

purchaser care, and the defendant’s intent in selecting its 

trade dress.” Vision Sports, 888 F.2d at 616 (internal citation 

omitted) (citing AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 

348–49 (9th Cir. 1979)). These are commonly referred to as 

the “Sleekcraft factors.” We review the district court’s 
ADIDAS AMERICA V. SKECHERS USA 11

findings on these factors under the clearly erroneous 

standard. Id.

The first Sleekcraft factor is of considerable importance 

to the likelihood of confusion analysis, given that “the 

greater the similarity between the two marks at issue, the 

greater the likelihood of confusion.” GoTo.com, 202 F.3d at 

1206. The similarities between the Stan Smith and Onix are 

unmistakable. Both shoes share the same white leather 

upper, a raised green mustache-shaped heel path, angled 

stripes with perforations, the identical defined stitching 

pattern around the perforations, and a flat white rubber 

outsole. Minor differences, including the use of Skechers’s 

logo, do not negate the overall impression of similarity 

between these two shoes. See Clicks Billiards Inc. v. 

Sixshooters Inc., 251 F.3d 1252, 1259 (9th Cir. 2001) 

(“[T]he issue is not whether defendant’s package or trade 

dress is identical to plaintiff’s in each and every particular. 

Rather, it is the similarity of the total, overall impression that 

is to be tested . . . .” (alterations in original) (quoting 1 J. 

Thomas McCarthy, McCarthy on Trademarks and Unfair 

Competition § 8:2 (4th ed. 2000))).

Other Sleekcraft factors also favor adidas. “Related 

goods are generally more likely than unrelated goods to 

confuse the public as to the producers of the goods.” 

Brookfield Commc’ns, 174 F.3d at 1055 (citing Official 

Airline Guides, Inc. v. Goss, 6 F.3d 1385, 1392 (9th Cir. 

1993)). “Related goods are those products which would be 

reasonably thought by the buying public to come from the 

same source if sold under the same mark.” Sleekcraft, 

599 F.2d at 348 n.10 (internal quotation marks omitted). 

There can be little doubt that the shoes in question here are 

similar goods, and that, if the shoes were sold under the same 

mark, the public would reasonably think they came from the 
12 ADIDAS AMERICA V. SKECHERS USA

same source. This makes the likelihood of confusion greater 

here than in other cases. And, as we discussed when 

analyzing the Stan Smith’s secondary meaning above, 

adidas has presented ample evidence that the Stan Smith has 

enjoyed tremendous commercial success and market 

recognition. Finally, the evidence supports an inference that 

Skechers intended to confuse consumers; it not only created 

a nearly identical shoe to the Stan Smith, but then used 

metadata tags to direct consumers who searched for “adidas 

stan smith” to the Onix web page.3

“[O]nly a subset of the Sleekcraft factors are needed to 

reach a conclusion as to whether there is a likelihood of 

confusion.” GoTo.com, 202 F.3d at 1206. Given the 

evidence, the district court here did not clearly err in 

concluding that adidas was likely to succeed on its claim that 

Skechers’s Onix shoe infringes on adidas’s Stan Smith trade 

dress.

 3 Relying on Multi Time Machine, Inc. v. Amazon.com, Inc., 

804 F.3d 930 (9th Cir. 2015), Skechers argues that its use of metadata 

tags clearly identifying the source of the product being sold is indicative 

only of an intent to compete, not an intent to infringe. This reliance is 

misplaced. In Multi Time, a watch manufacturer brought an action 

alleging that an online retailer’s listing of competitors’ products in 

response to a search for the manufacturer’s mark constituted trademark 

infringement. Id. at 934–35. Because the defendant there did not create 

any of the competing products, the use of the metadata was not probative 

of its intent to exploit the existing secondary meaning of a competitor’s 

mark or trade dress. Id. at 936–37. Here, however, Skechers’s use of 

the metadata is probative of its attempt to capitalize on the Stan Smith 

by both creating and selling the similar-looking Onix.
ADIDAS AMERICA V. SKECHERS USA 13

ii. Likelihood of Irreparable Harm

Skechers also argues that the district court’s finding of a 

likelihood of irreparable harm to the Stan Smith was 

erroneous.

In Herb Reed Enterprises, LLC v. Florida Entertainment 

Management, Inc., we reaffirmed that “[e]vidence of loss of 

control over business reputation and damage to goodwill 

[can] constitute irreparable harm,” so long as there is 

concrete evidence in the record of those things. 736 F.3d 

1239, 1250 (9th Cir. 2013). Consistent with Herb Reed, the 

district court here based its finding of irreparable harm from 

the Onix shoe on evidence that adidas was likely to suffer 

irreparable harm to its brand reputation and goodwill if the 

preliminary injunction did not issue. adidas’s Director of 

Sport Style Brand Marketing testified to the significant 

efforts his team invested in promoting the Stan Smith 

through specific and controlled avenues such as social media 

campaigns and product placement, and he stated that the 

Stan Smith earned significant media from various sources 

that was not initiated or solicited by adidas. adidas also 

presented evidence regarding its efforts to carefully control 

the supply of Stan Smith shoes and its concerns about 

damage to the Stan Smith’s reputation if the marketplace 

were flooded with similar shoes. Finally, adidas produced 

customer surveys showing that approximately twenty 

percent of surveyed consumers believed Skechers’s Onix 

was made by, approved by, or affiliated with adidas.4

 4 Skechers’s intent to foment and capitalize on such confusion is 

evident from its use of the terms “adidas” and “Stan Smith” in its source 

code for the Onix shoe webpage.
14 ADIDAS AMERICA V. SKECHERS USA

The extensive and targeted advertising and unsolicited 

media, along with tight control of the supply of Stan Smiths, 

demonstrate that adidas has built a specific reputation around 

the Stan Smith with “intangible benefits.” See Regents of 

Univ. of Cal. v. Am. Broad. Cos., 747 F.2d 511, 519 (9th Cir. 

1984) (internal quotation marks omitted). And, the customer 

surveys demonstrate that those intangible benefits will be 

harmed if the Onix stays on the market because consumers 

will be confused about the source of the shoes. We find that 

the district court’s finding of irreparable harm is not clearly 

erroneous. See Herb Reed, 736 F.3d at 1250; Rent-A-Ctr., 

Inc. v. Canyon Television & Appliance Rental, Inc., 944 F.2d 

597, 603 (9th Cir. 1991) (noting that harm to advertising 

efforts and goodwill constitute “intangible injuries” that 

warrant injunctive protection).

B. Skechers’s Cross Court and adidas’s ThreeStripe Mark

i. Likelihood of Success on the Merits

adidas alleges that Skechers’s Cross Court shoe infringes 

and dilutes its Three-Stripe trademark. The district court 

found that adidas showed a likelihood of success on the 

merits as to both the infringement and dilution claims.

a. Trademark Infringement

To establish trademark infringement, a plaintiff must 

show, among other things, ownership of its trademark and a 

likelihood of confusion between its and the defendant’s 

marks. 15 U.S.C. § 1125(a)(1)(A). Although Skechers 

concedes adidas’s ownership of the Three-Stripe mark, 

Skechers challenges the district court’s finding that adidas 

was likely to succeed in establishing the confusion element 

of its trademark infringement claim.
ADIDAS AMERICA V. SKECHERS USA 15

Given our deferential review, we cannot say the district 

court clearly erred in its analysis of the Sleekcraft factors. 

Both the Cross Court and adidas’s designs have three stripes, 

and while there are distinctions between the marks—

including a difference in the thickness of the stripes, the 

inclusion of a strip between the three stripes on the Cross 

Court, and the fact that the stripes do not continue to the sole 

of the shoe—the district court was permitted to discount 

these differences in conducting its factual determination 

regarding similarity. See Fortune Dynamic, Inc. v. 

Victoria’s Secret Stores Brand Mgmt., Inc., 618 F.3d 1025, 

1032 (9th Cir. 2010) (noting that “similarities are weighed 

more heavily than differences” in this analysis (internal 

quotation marks omitted)). This is especially true when the 

marks are attached to closely related products, as they are 

here. See Goss, 6 F.3d at 1392 (noting that a “diminished 

standard of similarity is therefore applied when comparing 

the marks of closely related goods”); see also supra Part 

III.A.i (discussing relatedness).

Nor did the district court clearly err in finding that the 

strength of the registered mark factor weighs in adidas’s 

favor. “The stronger a mark—meaning the more likely it is 

to be remembered and associated in the public mind with the 

mark’s owner—the greater the protection it is accorded by 

the trademark laws.” Network Automation, Inc. v. Advanced 

Sys. Concepts, Inc., 638 F.3d 1137, 1149 (9th Cir. 2011) 

(quoting Brookfield Commc’ns, 174 F.3d at 1058). “Two 

relevant measurements are conceptual strength and 

commercial strength.” Id. “[A] mark’s conceptual strength 

is proportional to the mark’s distinctiveness.” M2 Software, 

Inc. v. Madacy Entm’t, 421 F.3d 1073, 1080 (9th Cir. 2005). 

“[A]n arbitrary or fanciful mark is the most distinctive.” Id.

(citing GoTo.com, 202 F.3d at 1207). On the other hand, 

“[c]ommercial strength is based on ‘actual marketplace 
16 ADIDAS AMERICA V. SKECHERS USA

recognition.’” Network Automation, 638 F.3d at 1149 

(quoting Brookfield Commc’ns, 174 F.3d at 1058). Evidence 

of substantial advertising expenditures can transform a 

suggestive mark into a strong mark. Id. The Three-Stripe 

mark possesses both conceptual and commercial strength. 

Conceptually, it features an arbitrary and distinctive design. 

Commercially, the mark enjoys a long history of 

marketplace recognition, as well as adidas’s significant 

investment of resources to advertise the mark.

The district court also did not clearly err in finding that 

Skechers’s intent in selecting its mark weighs in adidas’s 

favor. In light of the parties’ litigation history, Skechers 

undoubtedly knew of adidas’s Three-Stripe mark when it 

conceived of its Cross Court shoe. “When one party 

knowingly adopts a mark similar to another’s, reviewing 

courts presume that the defendant will accomplish its 

purpose, and that the public will be deceived.” Acad. of 

Motion Picture Arts & Scis. v. Creative House Promotions, 

Inc., 944 F.2d 1446, 1456 (9th Cir. 1991) (citing Sleekcraft, 

599 F.2d at 354). This knowledge supports the district 

court’s finding that Skechers intended to deceive the public 

as to the source of its shoe by using a similar mark.

Taken together, we cannot say that the district court 

clearly erred in evaluating the Sleekcraft factors cited above 

in adidas’s favor.5 Accordingly, we hold that the district 

 5 Skechers argues that the use of its own logo on the Cross Court 

negates any confusion arising from its use of a similar three-striped 

mark. But a trademark may not be freely appropriated so long as the user 

also includes its own logo. See Levi Strauss & Co. v. Blue Bell, Inc., 

632 F.2d 817, 822 (9th Cir. 1980). Whether the likelihood of confusion 

persists despite the presence of the alleged infringer’s own logo is a 

question of fact, and the district court here did not clearly err in finding 

that Skechers’s logo was not sufficiently prominent in comparison to the 
ADIDAS AMERICA V. SKECHERS USA 17

court did not err in finding adidas showed a likelihood of 

success on its trademark infringement claim.

b. Trademark Dilution

“Dilution is ‘the lessening of the capacity of a famous 

mark to identify and distinguish goods or services, 

regardless of the presence or absence of—(1) competition 

between the owner of the famous mark and other parties, or 

(2) likelihood of confusion, mistake, or deception.’” Nissan 

Motor Co. v. Nissan Compt. Corp., 378 F.3d 1002, 1011 (9th 

Cir. 2004) (quoting 15 U.S.C. § 1127). To establish dilution, 

“a plaintiff must show that (1) the mark is famous and 

distinctive; (2) the defendant is making use of the mark in 

commerce; (3) the defendant’s use began after the mark 

became famous; and (4) the defendant’s use of the mark is 

likely to cause dilution by blurring or dilution by 

tarnishment.” Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 

634 (9th Cir. 2008) (citing 15 U.S.C. § 1125(c)(1)). “[T]he 

court may consider all relevant factors” to determine 

whether dilution is likely, including:

(i) The degree of similarity between the 

mark or trade name and the famous 

mark.

(ii) The degree of inherent or acquired 

distinctiveness of the famous mark.

 

three-striped mark to alleviate the likelihood of confusion. See Keds 

Corp. v. Renee Int’l Trading Corp., 888 F.2d 215, 222 (1st Cir. 1989) 

(rejecting argument that sneaker label negated confusion because “the 

impressed words can only be read a few feet away from the eyes”).
18 ADIDAS AMERICA V. SKECHERS USA

(iii) The extent to which the owner of the 

famous mark is engaging in 

substantially exclusive use of the 

mark.

(iv) The degree of recognition of the 

famous mark.

(v) Whether the user of the mark or trade 

name intended to create an 

association with the famous mark.

(vi) Any actual association between the 

mark or trade name and the famous 

mark.

15 U.S.C. § 1125(c)(2)(B). No one factor is necessarily 

determinative. See id.; see also Starbucks Corp. v. Wolfe’s 

Borough Coffee, Inc., 736 F.3d 198, 207, 211 (2d Cir. 2013) 

(noting that “the importance of each factor will vary with the 

facts” and that “the test is not an inflexible one”).

There is substantial overlap between many of these 

factors and the Sleekcraft factors. In challenging the district 

court’s determination that these factors weigh in favor of a 

likelihood of dilution, Skechers relies on many of the same 

objections it made to the district court’s findings regarding a 

likelihood of success on the trademark infringement claim. 

We reject these arguments here for the same reasons we 

rejected them in the infringement context. Skechers’s only 

new argument is that adidas failed to produce evidence of 

the degree of recognition of the Three-Stripe mark, but this 

is simply incorrect. There was substantial evidence from 

which the district court could find that the Three-Stripe mark 

enjoyed a high degree of recognition. Accordingly, we hold 
ADIDAS AMERICA V. SKECHERS USA 19

that the district court did not err in finding a likelihood of 

success on the merits on adidas’s trademark dilution claim.

ii. Likelihood of Irreparable Harm

Skechers next argues that the district court abused its 

discretion in issuing the preliminary injunction because 

under Winter, adidas has not shown that it will be irreparably 

harmed from sale of the Cross Court. We agree.

Both below and on appeal, adidas advanced only a 

narrow argument of irreparable harm as to the Cross Court: 

that Skechers harmed adidas’s ability to control its brand 

image because consumers who see others wearing Cross 

Court shoes associate the allegedly lesser-quality Cross 

Courts with adidas and its Three-Stripe mark.6 Yet we find 

no evidence in the record that could support a finding of 

irreparable harm based on this loss of control theory.

First, adidas’s theory of harm relies on the notion that 

adidas is viewed by consumers as a premium brand while 

Skechers is viewed as a lower-quality, discount brand. But 

even if adidas presented evidence sufficient to show its 

efforts to cultivate a supposedly premium brand image for 

itself, adidas did not set forth evidence probative of 

 6 While there are other ways post-sale confusion could 

hypothetically harm a trademark holder, see, e.g., Gen. Motors Corp. v. 

Keystone Auto. Indus., Inc., 453 F.3d 351, 358 (6th Cir. 2006); 4 J. 

Thomas McCarthy, McCarthy on Trademarks and Unfair Competition

§ 23:7 (5th ed. 2017), adidas has not raised any other theories of harm 

here. Unlike the dissent, we hold adidas to its burden of showing a 

likelihood of irreparable harm on the theory that it actually raised. See

Dissent at 26–29 & n.2 (outlining how adidas could have suffered postsale harm if the Skechers buyer could benefit from others believing she 

was wearing adidas shoes).
20 ADIDAS AMERICA V. SKECHERS USA

Skechers’s allegedly less favorable reputation. The only 

evidence in the record regarding Skechers’s reputation was 

testimony from adidas employees.7 First, adidas claimed 

that “Skechers generally sells its footwear at prices lower 

than adidas’s”—how much lower, and for what of any 

number of possible reasons other than the quality of its 

products, we do not know. This generalized statement 

regarding Skechers’s price point does not indicate that 

consumers view Skechers as a value brand. Second, one

adidas employee noted that within adidas, Skechers is

viewed as inferior to adidas. Again, Skechers’s reputation 

among the ranks of adidas employees does not indicate how 

the general consumer views it. Thus, the district court’s 

finding that Skechers is viewed as a “value brand” is an 

“unsupported and conclusory statement[]” that is not 

“grounded in any evidence or showing offered by [adidas].” 

 7 Such employee testimony is hardly the most reliable evidence of 

the reputation of a competitor. See Art Attacks Ink, LLC v. MGA Entm’t, 

581 F.3d 1138, 1147 (9th Cir. 2009) (holding that a reasonable jury 

“could not have found actual confusion” between subject trademarks 

based on testimony of three of plaintiff’s employees); Self-Realization 

Fellowship Church v. Ananda Church of Self-Realization, 59 F.3d 902, 

910 (9th Cir. 1995) (holding that declarations meant to rebut genericness 

of name “had little probative value regarding the assessment of consumer 

perception because they were from [plaintiff’s] employees and 

wholesalers” and “[t]rademark law is skeptical of the ability of an 

associate of a trademark holder to transcend personal biases” (internal 

quotation marks omitted)). However, we need not (and do not) rely on 

the diminished reliability of employee testimony here, where the 

testimony did not demonstrate that Skechers is a lower-value brand—

one of the tenets of adidas’s theory of irreparable harm—anyway. Nor 

do we “disregard” it, as the dissent suggests, Dissent at 33–34; we merely 

disagree with the dissent about what the testimony actually shows.
ADIDAS AMERICA V. SKECHERS USA 21

See Herb Reed, 736 F.3d at 1250 (internal quotation marks 

omitted).8

Second, adidas’s theory of harm is in tension with the 

theory of customer confusion that adidas has advanced to 

establish a likelihood of success on the merits. adidas did 

not argue in the district court, and has not argued on appeal, 

that a Cross Court purchaser would mistakenly believe he 

had bought adidas shoes at the time of sale. Indeed, this 

argument would be implausible because the Cross Court 

contains numerous Skechers logos and identifying features. 

Instead, adidas argues only that after the sale, someone else

looking at a Cross Court shoe from afar or in passing might 

not notice the Skechers logos and thus might mistake it for 

an adidas.

The tension between adidas’s consumer confusion and 

irreparable harm theories, then, boils down to this: How 

would consumers who confused Cross Courts for adidas 

shoes be able to surmise, from afar, that those shoes were 

low quality? If the “misled” consumers could not assess the 

 8 The dissent criticizes our reliance on Herb Reed. Dissent at

31–32. True, there are more facts in the record here that adidas claims

support a finding of likelihood of irreparable harm than there were in 

Herb Reed. See 736 F.3d at 1250 (noting there was only one email in 

the record that might support an inference of irreparable harm). The 

problem is that none of those facts actually support such a finding. Herb 

Reed makes clear that it is the plaintiff’s burden to put forth specific 

evidence from which the court can infer irreparable harm. See id. (“The 

district court’s analysis of irreparable harm is cursory and conclusory, 

rather than being grounded in any evidence or showing offered by [the 

plaintiff].”). Regardless of our deferential review, there must actually be 

such evidence in the record before we can uphold the district court’s 

factual findings. Id. (overturning the district court where its 

“pronouncements [were] grounded in platitudes rather than evidence”). 

We simply disagree with the dissent that there is any such evidence 

supporting adidas’s theory of irreparable harm on this record.
22 ADIDAS AMERICA V. SKECHERS USA

quality of the shoe from afar, why would they think any 

differently about adidas’s products? How could adidas’s 

“premium” brand possibly be hurt by any confusion?

Indeed, such a claim is counterintuitive. If a consumer 

viewed a shoe from such a distance that she could not notice 

its Skechers logos, it is unlikely she would be able to 

reasonably assess the quality of the shoes. And the 

consumer could not conflate adidas’s brand with Skechers’s 

supposedly “discount” reputation if she did not know the 

price of the shoe and was too far away to tell whether the 

shoe might be a Skechers to begin with. In short, even if 

Skechers does make inferior products (or even if consumers 

tend to think so), there is no evidence that adidas’s theory of 

post-sale confusion would cause consumers to associate 

such lesser-quality products with adidas. And, even if we 

agree with the district court that some consumers are likely 

to be confused as to the maker of the Cross Court shoe, we 

cannot simply assume that such confusion will cause adidas 

irreparable harm where, as here, adidas has failed to provide 

concrete evidence that it will. See Herb Reed, 736 F.3d at 

1250–51.

As discussed above, adidas presented specific evidence 

that its reputation and goodwill were likely to be irreparably 

harmed by Skechers’s Onix shoe based on adidas’s extensive 

marketing efforts for the Stan Smith and its careful control 

of the supply of Stan Smiths available for purchase. Thus, 

even post-sale confusion of consumers from afar threatens 

to harm the value adidas derives from the scarcity and 

exclusivity of the Stan Smith brand. But there was no 

comparable argument or evidence for the Cross Court.

Because adidas failed to produce evidence that it will 

suffer irreparable harm due to the Cross Court, we conclude 

that the district court abused its discretion by issuing a 
ADIDAS AMERICA V. SKECHERS USA 23

preliminary injunction for the Cross Court. See Herb Reed, 

736 F.3d at 1250.

* * *

We affirm the district court’s preliminary injunction 

order as to the Onix shoe as likely infringing on, and causing 

irreparable harm to, adidas’s Stan Smith trade dress. 

However, because we find that there was no evidence in the 

record that met the standard outlined in Herb Reed for 

likelihood of irreparable harm to adidas’s Three-Stripe mark, 

we reverse the preliminary injunction as to the Cross Court 

shoe. The parties should bear their own costs on appeal.

AFFIRMED IN PART, REVERSED IN PART.

CLIFTON, Circuit Judge, concurring in part and dissenting 

in part:

The preliminary injunction entered by the district court 

should be affirmed in full. I join with my colleagues in 

affirming the preliminary injunction regarding Skechers’s 

Onix shoe based on its infringement on the trade dress of 

adidas’s Stan Smith shoe and concur in that part of the 

majority opinion.

Where I part ways with the majority concerns the 

infringement by Skechers with its Cross Court shoe of the 

Three-Stripe mark owned by adidas. The majority holds that 

adidas has demonstrated a likelihood of success on the 

merits of that claim, sufficiently demonstrating both 

trademark infringement and trademark dilution, and I agree. 

Nonetheless, the majority reverses the preliminary 

injunction as to the Cross Court shoe on the ground that there 
24 ADIDAS AMERICA V. SKECHERS USA

was not evidence to support the district court’s determination 

that adidas was likely to suffer irreparable injury. As to that, 

I disagree. In my view, the majority opinion misunderstands 

our precedent, misperceives the means by which adidas will 

suffer irreparable injury, and mischaracterizes the evidence 

before the district court. As a result, I must, in part, 

respectfully dissent.

I. Herb Reed

The precedent relied upon by the part of the majority 

decision in question comes down essentially to a single case, 

Herb Reed Enterprises, LLC v. Florida Entertainment 

Management, Inc., 736 F.3d 1239 (9th Cir. 2013). That case 

involved the “The Platters,” the legendary vocal group that 

produced dozens of hits in the 1950s.1 The band broke up in 

the 1960s and “each member continued to perform under 

some derivation of the name ‘The Platters.’” Id. at 1242. 

Litigation followed, described in that opinion, from which 

Herb Reed Enterprises emerged as the legal owner of “The 

Platters” name. (Herb Reed was one of the founders of the 

original group.) Decades later, Herb Reed Enterprises 

sought to prevent the use of that name by another vocal 

group. The district court granted a preliminary injunction in 

favor of Herb Reed, which this court reversed. We 

concluded that the record supported the district court’s 

determination that Herb Reed was likely to succeed on the 

merits of its trademark claim, but that the record did not 

support the finding of a likelihood that Herb Reed 

 1 As noted in our opinion, The Platters put 40 singles on the 

Billboard Hot 100 List, including “Great Pretender,” “Smoke Gets In 

Your Eyes,” “Only You,” and “To Each His Own.” Herb Reed, 736 F.3d 

at 1242.
ADIDAS AMERICA V. SKECHERS USA 25

Enterprises suffered irreparable harm as a result of the 

trademark infringement.

Our decision noted that the legal rule previously was that 

“irreparable injury may be presumed from a showing of 

likelihood of success on the merits of a trademark 

infringement claim.” Id. at 1248–49 (emphasis in Herb 

Reed) (quoting Brookfield Commc’ns, Inc. v. W. Coast 

Entm’t Corp., 174 F.3d 1036, 1066 (9th Cir. 1999)). 

Subsequent Supreme Court decisions undermined that 

presumption, however, and in Herb Reed we held that a 

plaintiff could not simply rely on that presumption but must 

establish irreparable harm in order to obtain an injunction. 

We went on to reverse the preliminary injunction that had 

been entered by the district court, noting that the finding of 

irreparable harm was not “grounded in any evidence or 

showing offered by” the plaintiff. Id. at 1250 (emphasis 

added). We emphasized that “missing from this record is 

any such evidence.” Id. (emphasis added).

The argument by the Herb Reed plaintiff, as expressed 

by the district court in that case, was “the harm to Reed’s 

reputation caused by a different unauthorized Platters group 

warranted a preliminary injunction.” Id. (quoting from the 

district court order). This court “comb[ed] the record” and 

came up with only “an email from a potential customer 

complaining to [the appellants’] booking agent that the 

customer wanted Herb Reed’s band rather than another 

tribute band,” which we concluded “simply underscores 

customer confusion, not irreparable harm.” Id. There was, 

we concluded, no evidence at all to support the proposition 

that Reed’s reputation had been harmed. Importantly, the 

factual circumstances did not provide support for such an 

inference. More than a half century after the real Platters 

broke up, a legal claim to the name did not itself differentiate 
26 ADIDAS AMERICA V. SKECHERS USA

among the reputations of different tribute bands claiming 

tenuous connections with the original Platters through 

different performers. If the group that licensed the name 

from Herb Reed Enterprises could prove that it lost bookings 

as a result, it could claim damages, of course, but we saw no 

support for a finding that the reputation of the group 

associated with Herb Reed Enterprises had been injured.

Our decision in Herb Reed did not disclaim the logic that 

led to the creation of the now-discarded legal presumption, 

however. It is not hard to understand how the presumption 

arose. If a plaintiff can demonstrate a likelihood that it will 

succeed on the merits of its trademark claim—as adidas 

succeeded in establishing that Skechers’s Cross Court shoe 

infringed and diluted adidas’s famous Three-Stripe mark, a 

conclusion we affirm—it is not a big leap to conclude that 

adidas would be injured by that action. The inference might 

not always follow, as the facts in Herb Reed illustrate. That 

one Platters tribute band might be mistaken for another did 

not necessarily establish that the band that had a legal right 

to the name suffered an injury to its reputation. But in other 

circumstances, including those here, the inference of injury 

is logical. As the Third Circuit observed in affirming a 

similar preliminary injunction: “Although we no longer 

apply a presumption, the logic underlying the presumption 

can, and does, inform how we exercise our equitable 

discretion in this particular case.” Groupe SEB USA, Inc. v. 

Euro-Pro Operating LLC, 774 F.3d 192, 205 n.8 (3d Cir. 

2014). Our decision in Herb Reed did not change that.

II. Irreparable Injury

The district court found that adidas likely suffered harm 

as the result of post-sale confusion. The theory of post-sale 

confusion in the trademark context provides that “consumers 

could acquire the prestige value of the senior user’s product 
ADIDAS AMERICA V. SKECHERS USA 27

by buying the copier’s cheap imitation,” and that, “[e]ven 

though the knowledgeable buyer knew that it was getting an 

imitation, viewers would be confused.” 4 J. Thomas 

McCarthy, McCarthy on Trademarks and Unfair 

Competition § 23:7 (5th ed. 2018). “Thus, the senior user 

suffers a loss of sales diverted to the junior user, the same as 

if the actual buyer were confused.” Id. In other words, sale 

of the Cross Court, which infringed and diluted adidas’s 

Three-Stripe trademark, would result in post-sale confusion 

and harm adidas, the trademark holder, by threatening to 

divert potential customers who can obtain the prestige of its 

goods without paying its normal prices.2 See Rolls-Royce 

Motors Ltd. v. A & A Fiberglass, Inc., 428 F. Supp. 689, 694 

n.10 (N.D. Ga. 1976) (regarding grill and hood ornament kit 

meant to make a Volkswagon look like a Rolls-Royce).

Post-sale confusion accounts for consumers who buy 

imitations of a prestigious senior holder’s brand at lower 

prices in the very hope that others will confuse their products 

as being manufactured by the senior holder. About thirty 

years ago, when I was in private practice, my law firm was 

retained by Louis Vuitton to combat the sale of cheaper 

imitations. Some were counterfeits, reproducing the 

distinctive “LV” mark and pattern on bags similar to those 

actually sold by Louis Vuitton. Others were knock-offs, 

such as bags with a similar looking “LW” mark or products 

that Louis Vuitton probably wouldn’t dream of making, such 

as baseball caps covered with dozens of “LV” marks. Many 

 2 Diversion of customers is a form of irreparable harm. See 

McCarthy, supra, § 30:47 (“confusion may cause purchasers to refrain 

from buying either product and to turn to those of other competitors. Yet 

to prove the loss of sales due to infringement is also notoriously 

difficult”); see also, e.g., China Cent. Television v. Create New Tech. 

(HK) Ltd., 2015 WL 12732432, at *20 (C.D. Cal. Dec. 7, 2015).
28 ADIDAS AMERICA V. SKECHERS USA

of the items were sold at locations, like swap meets and flea 

markets, where few would expect to find real Louis Vuitton 

products. Prices were often a tiny fraction of what the real 

thing cost, and it was unlikely that the purchasers thought 

that they were walking away with genuine Louis Vuitton 

merchandise. Leaving the legal arguments aside, it wasn’t a 

surprise to me (and still isn’t) that Louis Vuitton was 

concerned and was willing to expend considerable effort to 

protect its trademark. As Professor McCarthy described, if 

the prestige of carrying a bag with the Louis Vuitton 

trademark could be obtained at a fraction of the price, and if 

viewers could not tell the difference, the value of the 

trademark would be in jeopardy. And, if someone did 

confuse the cheap imitation for the real thing, the lesser 

quality of the imitator could further imperil the perceived 

value of the Louis Vuitton products and trademark.

The Three-Stripe mark owned by adidas is one of the 

most famous marks in the world. There is evidence in the 

record that it has been heavily advertised and promoted by 

adidas for many years, at the cost of millions of dollars each 

year. adidas sells several hundred million dollars worth of 

products bearing the Three-Stripe mark each year in the 

United States and billions of dollars globally. The ThreeStripe mark is the subject of multiple trademark 

registrations, in this country and others. adidas has worked 

to protect its mark, including through litigation against 

Skechers, and Skechers has acknowledged, as the majority 

opinion notes, at 3, that adidas is the exclusive owner of the 

Three-Stripe mark and agreed not to use it or any 

confusingly similar mark.

That adidas is concerned about the impact of trademark 

infringement and dilution on the Three-Stripe mark, like 

Louis Vuitton was, is obvious. The reasons seem pretty 
ADIDAS AMERICA V. SKECHERS USA 29

obvious to me as well. If a shoe bearing a mark that looks 

like the Three Stripes cannot reliably be identified as being 

an adidas shoe, available at adidas prices, and made to satisfy 

the quality standards of adidas, then that Three-Stripe mark 

will lose some of its value and adidas will be harmed.

The majority opinion describes this as 

“counterintuitive.” Maj. Op. at 22. It seems logical to me, 

and it is well established in the law as a basis for a claim of 

dilution.

The majority opinion attempts to justify its constrained 

consideration of the post-sale confusion harm suffered by 

adidas on the premise that adidas “advanced only a narrow 

argument of irreparable harm” as to the Skechers shoe that 

infringed on the Three-Stripe mark, the Cross Court shoe. 

Id. at 19. The majority describes the argument as follows: 

“that Skechers harmed adidas’s ability to control its brand 

image because consumers who see others wearing Cross 

Court shoes associate the allegedly lesser-quality Cross 

Courts with adidas and its Three-Stripe mark.” Id.3

That argument is actually not so narrow. It is remarkably 

similar to the explanation provided by Professor McCarthy, 

as quoted above, at 26–27, that the majority opinion claims 

that adidas did not make: that “consumers could acquire the 

prestige value of the senior user’s product by buying the 

copier’s cheap imitation,” and that, “[e]ven though the 

knowledgeable buyer knew that it was getting an imitation, 

viewers would be confused.” McCarthy, supra, § 23:7. It is 

also consistent with the definition of “dilution” applied by 

 3 As discussed below, at 37–38, the majority is wrong in concluding 

that adidas’s dilution claim depends upon establishing that Skechers is 

perceived as a lesser-quality brand.
30 ADIDAS AMERICA V. SKECHERS USA

the district court in its preliminary injunction order: “‘the 

lessening of the capacity of a famous mark to identify and 

distinguish goods or services’ of the owner of the famous 

mark such that the strong identification value of the owner’s 

trademark whittles away or is gradually attenuated as a result 

of its use by another.” (Quoting adidas-Am., Inc. v. Payless 

Shoesource, Inc., 546 F. Supp. 2d 1029, 1060 (D. Or. 2008) 

(quoting Horphag Research Ltd. v. Garcia, 475 F.3d 1029, 

1035 (9th Cir. 2007) (quoting 15 U.S.C. § 1127)).)

The district court went on to observe that “[t]here are two 

types of dilution: by blurring and by tarnishment.” 

Tarnishment appears to be the only argument the majority 

considers. The district court described that form of dilution: 

“a famous mark is considered diluted by tarnishment when 

the reputation of the famous mark is harmed by the 

association resulting from the use of the similar mark.” But 

the district court’s order described the blurring form of 

dilution as well, recognizing it as part of adidas’s claim, and 

defining it as “association arising from the similarity 

between a mark or trade name and a famous mark that 

impairs the distinctiveness of the famous mark.” The district 

court found that adidas has offered sufficient proof to 

support a blurring claim. It specifically found that 

“Skechers’ infringement undermines adidas’s substantial 

investment in building its brand and the reputation of its 

trademarks and trade dress” and that “Skechers’ attempts to 

‘piggy back’ off of adidas’s efforts by copying or closely 

imitating adidas’s marks means adidas loses control over its 

trademarks, reputation, and goodwill.” There was nothing 

counterintuitive or narrow about the dilution claim presented 

by adidas and found persuasive by the district court.
ADIDAS AMERICA V. SKECHERS USA 31

III. Standard of Review

Before getting to a discussion of the evidence, I note that 

the majority appears to ignore the proper standard of review. 

Although the majority opinion correctly identifies clear error 

as the standard of review that applies to the district court’s 

factual determinations, Maj. Op. at 7, it does not actually 

refer to or apply that standard in rejecting the finding of the 

district court that adidas had produced “sufficient evidence 

of irreparable harm.” The failure to apply the proper 

standard makes it easier for the majority to substitute its own 

evaluation of the evidence for that of the district court. That 

is not our role.

IV. Evidence

Herb Reed faulted the plaintiff in that case for not 

producing “any” evidence in support of its claim of 

irreparable injury, as noted above, at 25. The majority 

apparently concludes the same to be true here. See Maj. Op. 

at 21 n.8, 22–23.

The district court was aware of Herb Reed. Its order 

cited and quoted from our decision in that case: “In 

trademark cases, although ‘[e]vidence of loss of control over 

business reputation and damage to goodwill [can] constitute 

irreparable harm,’ a court making a finding of irreparable 

harm must ground its analysis in evidence rather than 

conclusory assertions or speculation.” (Quoting Sleash, LLC 

v. One Pet Planet, LLC, 2014 WL 4059163, at *6 (D. Or. 

Aug. 15, 2014) (quoting Herb Reed, 736 F.3d at 1250).) Yet 

the majority opinion neither acknowledges that the district 

court cited the relevant precedent nor references the four 

pages in the district court’s order devoted to its discussion of 

irreparable harm.
32 ADIDAS AMERICA V. SKECHERS USA

adidas, in contrast to the appellee in Herb Reed, provided 

ample evidence of this harm. The record includes the sworn 

declarations and live testimony by several adidas employees, 

including marketing executives. These employees testified 

that adidas has, over decades, established a reputation for 

itself as a premium sports brand, whereas Skechers’s brand 

perception is as a “value brand” or “lower-end brand.” They 

also testified to the particular steps regarding investments in 

advertising, promotion, and quality control that adidas has 

taken to achieve and maintain this positive reputation. These 

steps include taking special care to ensure that the ThreeStripe mark is always prevalent, whether on a shoe or in a 

retail location. In addition, adidas spends millions each year 

on promotions and brand advertising on television, in print 

publications, and via digital media; sponsorships of sporting 

events such as the FIFA World Cup and Boston Marathon; 

college sports programs like those at Arizona State, Miami, 

Nebraska, and Texas A&M; teams such as the Manchester 

United Football Club and the French national basketball 

team; professional sports leagues such as Major League 

Soccer; and individual professional athletes like NBA player 

James Harden and MLB player Kris Bryant. adidas also uses 

“influencer marketing,” and works with celebrities like 

Kanye West and Pharrell Williams to ensure that they 

promote the adidas brand to their fans and followers.

Skechers did not rebut adidas’s evidence of the brands’ 

respective reputations, failing to cross-examine the adidas 

employees on these issues or to provide any counter 

evidence of its own. Nor did it submit any evidence denying 

the efforts of adidas to promote and protect the Three-Stripe 

mark or the sales of adidas products bearing the Three-Stripe 

mark. The majority opinion does not explain why the 

evidence of the substantial efforts of adidas to promote its 

brand and its Three-Stripe mark was insufficient. Nor does 
ADIDAS AMERICA V. SKECHERS USA 33

it explain why those efforts do not distinguish this case from 

the factual setting of Herb Reed, where the plaintiff failed to 

produce “any” evidence.

The majority asserts that it has not disregarded the 

evidence presented by adidas and relied upon by the district 

court, contending that it “simply disagree[s] with the dissent 

that there is any such evidence supporting adidas's theory of 

irreparable harm on this record.” Maj. Op. at 21 n.8. But as 

described above, and as will be further described below, 

there was lots of evidence to that effect. In a footnote, the 

majority opinion acknowledges that there were factual 

assertions supported by the record but asserts that none of 

those facts “actually support” the district court’s finding. Id.

(emphasis in original). The district court found differently, 

however, and nowhere does the majority explain what was 

clearly erroneous about the findings of the district court, let 

alone why the evidence presented by adidas fell short.

To the extent that it offers an explanation, the majority 

criticizes adidas’s showing by asserting that “[t]he only 

evidence in the record regarding Skechers’s reputation was 

testimony from adidas employees” and that “employee 

testimony is hardly the most reliable evidence.” Id. at 20 & 

n.7. It further denigrates that evidence by remarking that 

“Skechers’s reputation among the ranks of adidas employees 

does not indicate how the general consumer views it.” Id. at 

20. To begin with, the majority further illustrates by those 

words that there was evidence in the record supporting 

adidas’s contentions. The majority has elected to discount 

that evidence, by applying its own skepticism toward 

employee testimony. But the district court concluded that 

the evidence was reliable. The majority simply substituted 

its own view of the evidence to disregard it. That is not our 

function as a court of appeals.
34 ADIDAS AMERICA V. SKECHERS USA

The majority cites no authority to support the proposition 

that a preliminary injunction can be based only on the “most 

reliable” evidence. That is not the law. To the contrary, 

Herb Reed recognized that for a preliminary injunction, 

courts may even consider evidence that would normally be 

inadmissible. See 736 F.3d at 1248–50 & n.5.4

More broadly, the notion that the court of appeals can 

decide for itself that evidence relied upon by the district 

court should be ignored because it was provided by an 

employee of a party is both unsupported and badly 

misguided. Almost every case involves testimony by a 

witness who has a self-interest. We do not automatically 

disregard such evidence. The district court, like any trier of 

fact, could take that into account, and it could have decided 

that the evidence was not reliable. In this case, however, it 

concluded that the evidence was reliable. There was nothing 

clearly erroneous about doing so, and no legal rule supports 

the majority’s rejection of the district court’s finding.

Indeed, this court recently affirmed a preliminary 

injunction that relied on similar evidence by an employee of 

one of the parties. In Disney Enterprises, Inc. v. VidAngel, 

Inc., we held that the evidence—the unrebutted declaration 

of an employee of one of the plaintiffs which stated that the 

defendant’s infringement interfered with their right to 

control how consumers viewed the plaintiffs’ copyrighted 

works—was sufficient to establish the likelihood of 

 4 The cases cited in the majority opinion are easily distinguishable. 

See Maj. Op. at 20 n.7. Art Attacks Ink, LLC v. MGA Entm’t, 581 F.3d 

1138, 1147 (9th Cir. 2009), was an appeal of a jury verdict, and the 

appellant in Self-Realization Fellowship Church v. Ananda Church of 

Self-Realization, 59 F.3d 902 (9th Cir. 1995), challenged the dissolution 

of a preliminary injunction that the district court based upon its 

invalidation of claimed trade names and marks.
ADIDAS AMERICA V. SKECHERS USA 35

irreparable harm. 869 F.3d 848, 865–66 (9th Cir. 2017). 

The defendant there made essentially the same argument that 

the majority makes here, “that once the district court 

concluded the [plaintiffs] were likely to succeed on their 

copyright infringement claim, it relied on a forbidden 

presumption of harm rather than ‘actual evidence.’” Id. at 

866. However, the district court rejected this contention, and 

found that the sworn testimony of the plaintiffs’ employee, 

even without corroborating evidence, was sufficient 

evidence of irreparable harm. Id. Our court’s decision, 

affirming the district court, concluded that Herb Reed 

permitted the district court to rely on such evidence to find 

irreparable harm. The decision of the majority in this case 

to disregard employee evidence conflicts with our precedent.

The majority attempts to back away from the 

implications of its negative characterization of the evidence 

provided by adidas employees, by denying in a footnote that 

it relies on what it calls the “diminished reliability of 

employee testimony here.” Maj. Op. at 20 n.7. But, 

tellingly, its statement to that effect in a footnote does not 

withdraw the denigration of that testimony in the text of its 

opinion. And if that evidence is not discounted based on its 

source, it is unclear how the majority can assert, as it does 

on 21 n.8, that there is no evidence in the record supporting 

adidas’s theory of irreparable harm.

Besides, the majority is factually wrong about the source 

and substance of the evidence in the record. It was not just 

“testimony from adidas employees” regarding “Skechers’s 

reputation among the ranks of adidas employees.” A 

marketing professional has to be knowledgeable about 

consumer perceptions of his own brand, in this case adidas, 

and also of competitors, including Skechers. The evidence 

presented by adidas included evidence of what customers
36 ADIDAS AMERICA V. SKECHERS USA

thought. The record shows that adidas employees, as a 

normal part of their jobs, obtained and reviewed focus group 

research to understand “retail and consumer perceptions” of 

adidas products. See Barthelemy v. Air Lines Pilots Ass’n, 

897 F.2d 999, 1018 (9th Cir. 1990) (holding that witnesses’ 

personal knowledge may be “inferred from their positions 

and the nature of their participation in the matters to which 

they swore”). The evidence included testimony that 

consumers as well as adidas viewed Skechers as a lower end 

value brand: “Where our consumer and, in my opinion,

where we see Skechers is a lower end value brand.” 

(Emphasis added.) Contrary to the characterization in the 

majority opinion, that statement expressed more than a 

statement by adidas employees of their personal opinions 

regarding Skechers’s reputation.

The record also includes evidence that adidas products 

were generally priced above comparable Skechers products. 

There was testimony by an adidas employee that “Skechers 

generally sells its footwear at prices lower than adidas’s.” It 

would be expected that a company would be aware of 

relative pricing by competitors. Skechers never disputed the 

competence of that testimony or provided evidence to the 

contrary. Beyond that, the record also contains evidence that 

specific adidas products sold at higher prices than their 

alleged Skechers’s counterparts. For example, the record 

contains proof that the standard version of the adidas Stan 

Smith retailed between $85 to $75, whereas the Skechers 

Onix was priced at $65. The adidas Supernova was priced 

between $130 to $95, whereas the Skechers Supernova was 

$70. There is no reason why this evidence of the prices of 

other shoes could not be relied upon by the district court to 

corroborate the statement by adidas’s employee that 

Skechers generally sold its shoes at a lower price. Again, 
ADIDAS AMERICA V. SKECHERS USA 37

Skechers did not contest the relative prices of the brands’ 

shoes, leaving the evidence of its lower pricing unrebutted.

In sum, based on the record before it, the district court 

was well within its discretion to infer that confusion between 

Skechers’s “lower-end” footwear and adidas’s footwear was 

likely to harm adidas’s reputation and goodwill as a 

premium shoe brand. This is precisely the type of harm that 

is “irreparable” insofar as it cannot be adequately 

compensated for by money damages. Rent-A-Center, Inc. v. 

Canyon Television & Appliance Rental, Inc., 944 F.2d 597, 

603 (9th Cir. 1991). It was simply not the case, as the 

majority opinion asserts, that “the testimony did not 

demonstrate that Skechers is a lower-value brand.” Maj. Op. 

at 20 n.7. The findings by the district court were not clearly 

erroneous.

Finally, the district court’s determination did not even 

depend on adidas’s testimony regarding Skechers’s

reputation as a lower quality brand. The premise of the 

majority opinion that adidas had to establish that difference 

in reputation, stated multiple times, see, e.g., Maj. Op. at 20

& n.7, is wrong. Instead, the loss by adidas of control over 

its mark was by itself irreparably harmful. “A trademark 

carries with it a message that the trademark owner is 

controlling the nature and quality of the goods or services 

sold under the mark. Without quality control, this message 

is false because without control of quality, the goods or 

services are not truly ‘genuine.’” 1 McCarthy on 

Trademarks and Unfair Competition § 3:11 (5th ed. 2018). 

“One of the most valuable and important protections 

afforded by the Lanham Act is the right to control the quality 

of the goods manufactured and sold under the holder’s 

trademark. . . . For this purpose the actual quality of the 

goods is irrelevant: it is the control of quality that a 
38 ADIDAS AMERICA V. SKECHERS USA

trademark holder is entitled to maintain.” Id. (quoting El 

Greco Leather Prods. Co. v. Shoe World, Inc., 806 F.2d 392, 

395 (2d Cir. 1986)). Accordingly, irreparable harm exists in 

a trademark case when the party seeking the injunction 

shows that it will lose control over the reputation of its 

trademark. See, e.g., La Quinta Corp. v. Heartland Props. 

LLC, 603 F.3d 327, 343 (6th Cir. 2010) (explaining that a 

plaintiff who loses “the ability to control its brand image and 

reputation” loses an “intangible, but valuable . . . asset[].”). 

There was substantial evidence in the record regarding the 

value of adidas’s mark and its management of the mark 

through investment and quality control over its products. 

Though the majority ignores that evidence, it was there and 

could properly be relied upon by the district court to support 

its finding of irreparable harm.

V. Conclusion

In reviewing a preliminary injunction, the scope of our 

review “is limited and deferential.” Guzman v. Shewry, 

552 F.3d 941, 948 (9th Cir. 2009) (citation omitted). Herb 

Reed reiterated that “limited and deferential” standard. 

736 F.3d at 1247 (citation omitted). Moreover, Herb Reed

instructed us to afford district courts wide discretion to make 

a finding when there is supporting evidence, and 

acknowledged that, “we will reverse only if the court’s 

decision resulted from a factual finding that was illogical, 

implausible, or without support in inferences that may be 

drawn from the facts in the record.” Id. (internal quotation 

marks omitted). Based upon the record and adidas’s 

unrebutted evidence, it is clear to me that the district court 

did not abuse its discretion, and that the preliminary 

injunction should be affirmed in full. I respectfully dissent.