Skechers USA Inc. said that the International Trade Commission (ITC) has found that Converse’s registered and common law trademarks in the Chuck Taylor midsole design are invalid; that Skechers’ Twinkle Toes and BOBS shoes would not infringe Converse’s claimed trademarks, even if the trademarks were valid; and that Skechers can continue importing and selling its Twinkle Toes and BOBS shoes in the United States.
In October 2014, Converse sued Skechers in federal district court and in the ITC alleging that the company’s well-known Twinkle Toes and BOBS product lines infringed Converse’s registered and common law trademarks in the Chuck Taylor midsole design. The case went to trial before the ITC in August 2015.
In a November 17, 2015 opinion, the Chief Administrative Law Judge of the ITC, the Honorable Charles E. Bullock, ruled that Skechers’ Twinkle Toes and BOBS product lines do not infringe Converse’s trademarks for the Chuck Taylor midsole. In so ruling, the Judge noted that both of the Skechers product lines feature prominent branding and that the Twinkle Toes line contains design features that “create enough differences that the shoes bearing them cannot be said to be similar to [the Chuck Taylor].” The Judge also stated that the survey evidence concluded that there was no likelihood that consumers would confuse the Skechers Twinkle Toes and BOBS designs with those of Converse’s Chuck Taylor designs. In addition, the Judge ruled that Converse has no common law trademark rights in the Chuck Taylor midsole because the design is not distinctive, not famous, and has failed to acquire secondary meaning. These portions of the Judge’s opinion were affirmed by the ITC.
The Judge also ruled that Converse’s registered trademark for the Chuck Taylor design is valid. However, this portion of the Judge’s opinion was reversed by the ITC, which invalidated Converse’s registered trademark along with Converse’s common law trademark.
The ITC thus concluded that there was no violation by Skechers of Converse’s asserted midsole trademarks and the ITC did not issue an exclusion order against Skechers or any of Skechers’ products.
“We are pleased that the ITC invalidated Converse’s claimed trademarks in the Chuck Taylor midsole design,” stated Michael Greenberg, president of Skechers. “Countless companies, including Skechers, have used the same midsole design in canvas court-style sneakers for decades.” “We are also pleased that the ITC affirmed Judge Bullock’s conclusion that the Twinkles Toes and BOBS designs are distinctively different from the Chuck Taylor, and that there is no likelihood that consumers would ever confuse either Twinkle Toes or BOBS products with the Chuck Taylor. The decision further recognizes that Skechers investment in our distinctive designs and brand identity has helped build Twinkle Toes into a number one shoe line for young girls, and both Twinkle Toes and BOBS into household names synonymous with Skechers – not with Converse or any other brand.”
Skechers is represented in the matter by Morgan Chu, Samuel Lu, Jane Wald, Melissa Rabbani, and Grace Chen of Irell & Manella; Jeffrey Barker of O’Melveny & Myers; and Barbara Murphy of Foster, Murphy, Altman & Nickel.
