WASHINGTON — Skechers USA Inc. said Thursday it won a “favorable ruling” in a U.S. International Trade Commission trademark infringement case brought by Converse Inc.
Skechers said the chief administrative law judge presiding over the case, Charles E. Bullock, ruled that two of the company’s product lines, Twinkle Toes and Bobs, did not infringe on Converse’s registered trademark for its Chuck Taylor midsole design.
“While we expected this result, we are still very pleased with the judge’s ruling on Twinkle Toes and Bobs,” said 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.”
Skechers was one of a few companies, including Wal-Mart Stores Inc. and Highline United LLC, that refused to settle with Converse and forced the case to trial at the ITC in August.
Converse, owned by Nike Inc., filed the complaint with the ITC in October 2014 alleging that 31 retailers and manufacturers infringed on some of the brand’s trademarks used primarily in its Chuck Taylor All Star sneaker. The ITC initiated an investigation against the companies the next month. Converse also filed lawsuits in federal court against the companies.
Converse claimed in the complaint that all of the defendants infringed on its iconic midsole trademark design, made up of a toe bumper and a toe cap, plus either an upper stripe and/or lower stripe, associated with its “All Star” high-top sneakers that were introduced in 1917 and renamed “Chuck Taylor” after a Converse salesman and basketball player. A portion of the defendants are accused of illegally infringing on Converse’s outsole design, composed of a distinct diamond pattern.
Bullock issued his first determination on Tuesday. While the full details of the decision have not been made public, attorneys for the companies have reportedly received confidential versions of the judge’s initial ruling.
The only notice that has been made public confirmed that the judge found there was a violation of section 337 of the Tariff Act of 1930 in the importation into the U.S., the sale for importation or sale after importation of certain Converse trademarks, relating to the company’s iconic Chuck Taylor All Star sneakers. The names of the companies found to be violating Converse’s trademarks were not disclosed publicly.
Skechers, apparently quoting from the decision, said the judge indicated that both Skechers product lines feature prominent branding and the Twinkle Toes line, in particular, contains design features that “create enough differences that the shoes bearing them cannot be said to be similar to [the Chuck Taylor].”
Skechers said the judge also stated that surveys concluded there was no likelihood that consumers would confuse Skechers designs with those of Converse’s Chuck Taylor designs. Skechers added that the judge ruled that Converse has “no common law trademark” rights to the Chuck Taylor midsole design because it is “not distinctive, not famous and has not failed to acquire secondary meaning.”
Converse has also declared victory in the case, in light of the findings of violations, noting that the judge “validated” its intellectual property rights related to the Chuck Taylor sneakers and “supported our right to enforcement.”
A majority of the companies named in the complaint, including Tory Burch, Aldo Group, Fila USA, Iconix Brand Group, Ralph Lauren Corp., Hennes & Mauritz and Zulily Inc. entered into settlement agreements with Converse since the complaint was filed and agreed to stop importing the allegedly infringing shoes.
The initial determination will move to the full ITC for a decision.