Columbia Sportswear recently launched a pair of legal battles over trademarks and trade secrets.
On April 28, the Sorel owner filed a lawsuit against fellow Portland-area brand Barefoot Creations and Softstar Shoes for trademark infringement in their hometown U.S. District Court, alleging the defendant’s “Omniflex” sole too closely mirrors its trademarked “Omni” family mark.
Separately, the company on April 21 sued former Columbia employees William Ferreira and Dean Rurak for misappropriation of trade secrets. The complaint claims the two employees quit their jobs at Columbia on Oct. 28, 2022 and allegedly downloaded proprietary information in violation of their six-month no-compete clause before going to work for Huk, a company based in Charleston, S.C. that makes performance apparel and footwear for fishing enthusiasts.
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The defense’s response to Columbia’s 18-page lawsuit was due on June 26, but attorneys for Ferreira and Rurak requested an extension to July 3 that went unopposed by plaintiff’s counsel.
Omniflex was one of Softstar Shoes’s new releases in January of 2020 on the 10-year anniversary of its RunAmoc sole, which launched the company from primarily a baby and children’s shoe seller to one serving active adults. Made by Italy-based rubber sole-maker Vibram, the Omniflex featured a 5mm rubber sole meant to be durable enough for hiking, but flexible enough to be rolled up tightly. The company described the product as hitting “the sweet spot between the street and trail soles.”
The name, however, hit a nerve with Columbia, which prides itself on its Omni product line that includes Omni-Heat, Omni-Grip, Omni-Tech, Omni-Wick, Omni-Freeze, Omni-Shield, Omni-Shield Blood ‘N Guts, Omni-Wind Block and Omni-Shade.
Columbia also took issue with its geographic proximity to Softstar, with headquarters just 90 miles south.
“Specifically, consumers in Portland and the Portland Division are likely to be confused by the accused goods,” according to the complaint. “Softstar has also attended events in this Division where it has marketed and sold shoes. One of its shoes was named the ‘Portlander.’ Upon information and belief, Softstar has marketed, offered to sell, and sold shoes under the Omniflex mark to customers in this Division.”
Softstar does not have a patent approved or pending for “Omniflex” on the U.S. Patent Trademark Office website.
Columbia is suing Barefoot Creations and Softstar Shoes for federal and state trademark infringement, false designation of origin and unfair competition. Along with legal fees, Columbia is asking for damages in sales of the Softstar Omniflex line, as well as the halt of any future and the destruction of already produced OmniFlex shoes.
In suing former employees Ferreira and Rurak, Columbia says that on the evening of Oct. 27, 2022, hours before submitting his resignation, Ferreira downloaded and copied “sensitive” and “proprietary” documents to an external hard drive.
Ferreira, the complaint says, was director of global merchandising for the company who quit after 18 years of employment, and Rurak was senior vice president-chief product officer, who worked for Columbia for 15 years.
In its filing, Columbia states it contacted the former employees on Nov. 19, 2022 about the downloaded documents in question only to be told by Ferreira’s counsel that Ferreira had only downloaded one presentation from Columbia at a “high-level leadership meeting” in Montreal, only to recant and amend the defendant’s statement that Ferreira had downloaded “additional presentations.”
The company makes similar claims about Rurak’s participation in alleged misappropriation of trade secrets.
“Had they known Rurak was about to resign to work for a competitor, the CSC executives and employees at these meetings would not have discussed this information with Rurak,” the complaint reads. “The night before he resigned, Ferreira downloaded numerous highly confidential files that are directly relevant to any work he might do for Huk, including documents specifically related to Huk. Ferreira has not, as of the date of this Complaint, returned any of CSC’s confidential information to CSC.”