Birkenstock v. White Mountain — Laches Could Not End the “Ugly Sandals” IP Suit

Background

Birkenstock alleges that White Mountain copied the trade dress of its Arizona, Boston, and Mayari footwear and infringed its bone-pattern sole trademark. White Mountain sought partial summary judgment on laches, arguing that Birkenstock’s sales team had known about the accused footwear since the 1990s but waited until 2024 to sue. Birkenstock responded that White Mountain’s sales were initially too small to justify litigation and later expanded.

The Court’s Holding

The court denied White Mountain’s motion. Material factual disputes remained over when White Mountain’s sales became substantial enough to trigger Birkenstock’s duty to sue and whether the doctrine of progressive encroachment excused the earlier delay. Evidence could support a finding that the challenged sales were de minimis until approximately 2018 and only later grew into a meaningful competitive threat.

Because those disputed facts bear directly on whether Birkenstock delayed unreasonably, the court could not resolve laches at summary judgment. The related motions to strike portions of the parties’ factual submissions were denied as moot because the court did not rely on the challenged material.

Key Takeaways

• Early awareness of isolated infringement does not necessarily start the laches clock if the defendant later expands into a materially greater threat.
• Progressive encroachment is fact-intensive and can defeat summary judgment when the timing and scale of market expansion are disputed.
• The ruling preserves Birkenstock’s trade dress, trademark, unfair-competition, and related state-law claims for further proceedings.

Why It Matters

Brand owners are not always required to sue over every small suspected infringement immediately. But they need evidence showing when an accused seller’s conduct became commercially significant. Here, disputes over White Mountain’s sales trajectory prevented laches from ending the footwear claims before trial.