Skechers USA, Inc. reported it won a “major victory” in a trademark lawsuit filed against Skechers by Asics Corporation and Asics America Corporation. The U.S. District Court for the Central District of California denied Asics' motion for a preliminary injunction against Skechers, expressly finding that there are “substantial” differences between Asics' trademark and Skechers' stripe designs.
Asics sued the company for trademark infringement, unfair competition, trademark dilution and false advertising, claiming that the stripe design on four Skechers shoe styles infringes Asics' stripe trademark. Asics sought a preliminary injunction against Skechers to prevent Skechers from making and selling the four shoe styles. After hearing oral argument, the court denied Asics' motion. In a 21-page opinion dated April 25, 2007, the court found that Asics had not shown that it is likely to succeed in its trademark infringement case against Skechers. The District Court's opinion states: “the designs are quite different and in the marketplace the shoes appear highly dissimilar.” The court also found that the Asics trademark and Skechers stripes were not similar enough to infer that Skechers copied its designs from Asics.
“We feel vindicated by the court's opinion that there are 'substantial' differences between the Skechers stripe designs and the Asics' trademark,” stated Philip G. Paccione, General Counsel of Skechers. “As we have said all along, the Asics suit is nothing more than an attempt to monopolize the use of common design elements, undermine legitimate competition and intimidate retailers. Skechers is hip, cutting edge and original in its shoe designs, and does not attempt to trade on the brand image and identity of any company other than Skechers.”
Michael Zell, VP general counsel for Asics America Corp., commented to SportsOneSource in an email that “Of course we are disappointed that the judge did not grant our request for a Preliminary Injunction. However as indicated by the Judge at oral hearing, it is a close case on whether the 'drastic' remedy of a Preliminary Injunction should be granted. If this lawsuit continues we hope to prove at trial, as suggested by the facts we now know, that Skechers has infringed our legal rights by using the rights we have in our strong Stripe Design trademark, knocking off one of our key fashion shoes and attempting to develop a 'line of' ASICS shoes. The decision clearly confirmed our strong trademark rights in the ASICS Stripe Design. Eventually it will be up to the courts to decide this case, not hyped Press Releases. Our brand is our soul and we have no choice but to protect it.”
The District Court also declined to grant Asics injunctive relief on its trade dress infringement claim, which was limited to one of the four Skechers styles in issue, the Skechers Showdowns. The court found that there was no evidence of actual confusion or that Skechers had intentionally copied Asics' design.
Paccione continued, “In light of this resounding victory, Skechers has decided to focus its resources on bringing this infringement case to a successful and prompt conclusion, and will consider recourse for Asics' anti-competitive and other wrongful conduct at a later date.”
Skechers was represented in the matter by Marshall Lerner, Brad Mattes and Philip Nulud of Kleinberg & Lerner of Los Angeles, California.