Skechers USA Inc. claimed a partial victory Thursday in its patent infringement dispute with Nike Inc.’s wholly-owned subsidiary Converse Inc. relating to the Converse Chuck Taylor shoe.
In October 2014, Converse sued Skechers in federal district court and before the International Trade Commission (“ITC”) alleging that the company’s Twinkle Toes and BOBS product lines infringed its Chuck Taylor midsole common law and registered trademarks. The case went to trial before the ITC in August 2015.
In a Nov. 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 registered trademark for the Chuck Taylor midsole, Skechers said in a statement released Thursday. In making his 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 designs with those of Converse’s Chuck Taylor designs, Skechers said.
“While we expected this result, we are still very pleased with the Judge’s ruling on Twinkle Toes and BOBS,” stated Michael Greenberg, president of Skechers. “Skechers is an ardent brander that spends more than $100 million a year in advertising for the very purpose of distinguishing its brands and products from those of its competitors. Our investment in our distinctive designs and brand identity has helped build Twinkle Toes into the 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. The Judge's ruling recognizes this.”
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.
Manhattan Beach, CA-based Skechers recently displaced Adidas as the second largest athletic footwear brand in the United States, according to some market research. The company's footwear is available in the United States and over 120 countries and territories worldwide via department and specialty stores and more than 1,200 Skechers retail stores.
