Skechers USA Inc. on Thursday announced that it has won yet another major victory over Nike Inc. in a case relating to Nike’s wholly owned subsidiary Converse Inc.
The chief administrative law judge of the International Trade Commission, the Honorable Charles E. Bullock, found no violation of Converse’s Chuck Taylor midsole trademark by Skechers’ Twinkle Toes and BOBS from Skechers product lines or by any of the other Skechers product lines accused in the case.
Judge Bullock further ruled that the midsole trademark is not valid as to Skechers because the trademark had not acquired secondary meaning at the time that Skechers began using its designs back in 2001.
This is the third time that Skechers has won a victory in this case against Converse since Converse sued Skechers in 2014, alleging that Skechers’ Twinkle Toes and BOBS from Skechers product lines, in addition to Skechers’ Daddy’$ Money and Hydee Hy-top product lines, infringed Converse’s Chuck Taylor midsole trademark.
In November 2015, Judge Bullock ruled that Skechers’ Twinkle Toes and BOBS product lines do not infringe Converse’s Chuck Taylor midsole trademark. 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 Skechers’ Twinkle Toes and BOBS from Skechers designs with those of Converse’s Chuck Taylor designs.
In June 2016, the full ITC found that Converse’s trademark rights in the Chuck Taylor midsole design are invalid; that Skechers’ Twinkle Toes and BOBS shoes would not infringe Converse’s claimed trademark rights, even if the trademark rights were valid; and that Skechers can continue importing and selling its Twinkle Toes and BOBS from Skechers shoes in the United States.
Converse appealed the ITC’s June 2016 decision to the United States Court of Appeals for the Federal Circuit, and in October 2018 the Federal Circuit remanded the case back to the ITC for further proceedings, resulting in Judge Bullock’s October 9, 2019 ruling, which was a complete victory for Skechers.
“We are pleased that Judge Bullock recognized that Skechers has been using these designs long before Converse acquired any trademark rights in them,” stated Michael Greenberg, president of Skechers. “We are also pleased that multiple decisions repeatedly recognized that the Twinkle Toes and BOBS from Skechers designs are distinctively different from the Chuck Taylor design, and that there is no likelihood that consumers would ever confuse either Twinkle Toes or BOBS products with the Converse design. These rulings validate Skechers investment in its distinctive designs and brand identity, an investment that has helped build Twinkle Toes into a number one shoe line for young girls, and build 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 and Samuel Lu of Irell & Manella; and Barbara Murphy of Foster, Murphy, Altman & Nickel.