Skechers Scores Major Victory in Trademark Dispute with Converse in Ruling by the United States International Trade Commission
June 27 2016 - 9:00AM
Business Wire
- ITC Invalidates Converse's
Registered and Common Law Trademarks in the Chuck Taylor Midsole
Design
- ITC Finds Skechers' Twinkle Toes and
Bobs Shoes Would Not Infringe in Any Event
SKECHERS USA, Inc. (NYSE:SKX), a global footwear leader and the
second largest athletic footwear brand in the United States, today
announced 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.
About SKECHERS USA,
Inc.SKECHERS USA, Inc., based in Manhattan
Beach, California, designs, develops and markets a diverse
range of lifestyle footwear for men, women and children, as well as
performance footwear for men and women. SKECHERS footwear is
available in the United States and over 160 countries and
territories worldwide via department and specialty stores, more
than 1,410 SKECHERS retail stores, and the Company’s e-commerce
website. The Company manages its international business through a
network of global distributors, joint venture partners
in Asia, and wholly-owned subsidiaries
in Brazil, Canada, Chile, Japan, Latin
America and throughout Europe. For more information,
please visit skechers.com and follow us
on Facebook (facebook.com/SKECHERS) and Twitter
(twitter.com/SKECHERSUSA).
This announcement contains forward-looking statements that are
made pursuant to the safe harbor provisions of the Private
Securities Litigation Reform Act of 1995. These forward-looking
statements include, without limitation, the Company’s future
domestic and international growth, financial results and operations
including expected net sales and earnings, its development of new
products, future demand for its products, its planned domestic and
international expansion and opening of new stores, the completion
of the expansion and upgrade of the Company’s European distribution
center, and advertising and marketing initiatives. Forward-looking
statements can be identified by the use of forward looking language
such as “believe,” “anticipate,” “expect,” “estimate,” “intend,”
“plan,” “project,” “will be,” “will continue,” “will result,”
“could,” “may,” “might,” or any variations of such words with
similar meanings. Any such statements are subject to risks and
uncertainties that could cause actual results to differ materially
from those projected in forward-looking statements. Factors that
might cause or contribute to such differences include international
economic, political and market conditions including the uncertainty
of sustained recovery in Europe; entry into the highly
competitive performance footwear market; sustaining, managing and
forecasting costs and proper inventory levels; losing any
significant customers; decreased demand by industry retailers and
cancellation of order commitments due to the lack of popularity of
particular designs and/or categories of products; maintaining brand
image and intense competition among sellers of footwear for
consumers; anticipating, identifying, interpreting or forecasting
changes in fashion trends, consumer demand for the products and the
various market factors described above; sales levels during the
spring, back-to-school and holiday selling seasons; and other
factors referenced or incorporated by reference in the Company’s
annual report on Form 10-K for the year ended December 31,
2015 and its quarterly report on Form 10-Q for the quarter ended
March 31, 2016. The risks included here are not exhaustive. The
Company operates in a very competitive and rapidly changing
environment. New risks emerge from time to time and the companies
cannot predict all such risk factors, nor can the companies assess
the impact of all such risk factors on their respective businesses
or the extent to which any factor, or combination of factors, may
cause actual results to differ materially from those contained in
any forward-looking statements. Given these risks and
uncertainties, you should not place undue reliance on
forward-looking statements as a prediction of actual results.
Moreover, reported results should not be considered an indication
of future performance.
View source
version on businesswire.com: http://www.businesswire.com/news/home/20160627005384/en/
SKECHERS USA, Inc.Jennifer ClayVP of Corporate
Communications310-937-1326
Skechers USA (NYSE:SKX)
Historical Stock Chart
From Mar 2024 to Apr 2024
Skechers USA (NYSE:SKX)
Historical Stock Chart
From Apr 2023 to Apr 2024