Porsche Makes Noise in Germany over 'Cayman' Mark

Monday, February 8th, 2010 at 5:08 pm by Ari Taub

Is Porsche the first thing you think of when you hear the word “Cayman?” If so, would you still be led to think of Porsche if the word “Cayman” appeared on a plastic shoe? Porsche apparently thinks so. Porsche has sued Crocs, a Colorado-based shoe manufacturer, for Crocs’ use of the trademarked name “Cayman,” a name registered by Porsche for one of its car models. According to the suit, there seems to be a fear that consumers will be led to believe that Porsche is somehow endorsing the shoe. Interestingly, Porsche has opted to sue in their home country of Germany rather than in the United States, where most of Crocs’ sales are made. This was almost certainly a strategic decision, since a U.S. law is highly unfavorable to Porsche’s claims.

For this trademark action to be sustained in the United States, Porsche would have to show that “Cayman” was a registered trademark and that the Croc infringed on that mark in a manner encompassed by the registration. Alternatively, even without a registered mark, if Porsche can demonstrate that the name “Cayman” has become so distinctive to consumers that it has become strongly associated with Porsche, and that those consumers would be confused as to the origin of the product on which the mark appeared (e.g., the Croc), then Porsche could make out a common law trademark suit.

Under the first alternative, although Porsche has this mark registered with the U.S.P.T.O. relating to “footwear,” it would be difficult to maintain this action for past infringements, since the registration was only made on April 7 of last year (presumably around the same time that the “cease and desist” letter was sent).
If Porsche looked to sue for common law trademark infringement, then, pursuant to the Lanham Act and the federal precedent on point, a cause of action will likely be very difficult to maintain. The The Cayman Islands, or a species within the reptile family).

Second, Porsche would have to demonstrate that there is a “likelihood of consumer confusion” between the name “Cayman” on the Crocs and Porsche. Polaroid created an eight-factor balancing test to make such determinations, which includes strength of the mark, similarities of the marks, evidence of actual confusion, consumer sophistication, and other factors. Consumers need not believe that Porsche actually produced the shoe: rather, they need only believe that there was some affiliation, sponsorship, or approval, on the part of Porsche. Because of the drastic differences between the two products, their consumers, and the companies in general, a Polaroid balancing test would likely weigh heavily on the side of Crocs.

If Porsche had registered the “Cayman” name in the United States prior to Crocs’ use of the mark, then they would likely be suing here. Moreover, suing in Germany seems to demonstrate that the likelihood of succeeding on the merits under the “consumer confusion” theory is also quite low. It appears that staying close to home isn’t the only reason Porsche is suing in Germany.