Almost two years ago, Converse sued Skechers in federal district court and at the International Trade Commission, saying Skechers’ Twinkle Toes and BOBS shoes infringed on its Chuck Taylor trademark. Although Skechers set aside about $6 million in the event the case went against it, after a trial in August, an administrative judge ruled in November that Nike’s case was almost completely without merit.
The judge held the Skechers’ shoes didn’t infringe Converse’s trademarks for the Chuck Taylor midsole because:
Both of Skechers brands feature prominent design features that “cannot be said to be similar to [the Chuck Taylor shoes].”
There was no likelihood consumers would confuse the Skechers Twinkle Toes or BOBS for Chuck Taylors.
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.
All of those portions of the ruling were affirmed by the ITC. But where the administrative judge had thrown Nike a bone by saying Converse’s registered trademark for the Chuck Taylor design was valid, the ITC overturned that too, and invalidated both Converse’s registered trademark and its common law trademark.
From article on the Converse/Nike suit that Sketchers won recently:
"Lawsuits are part and parcel of doing business in the footwear industry, and Skechers has been on both sides of such fights. Earlier this year, Nike sued Skechers on a different matter, saying Skechers had infringed on eight different Nike design patents that were issued to it over the last two years; and a few months before that, Skechers was sued by Adidas for allegedly selling knock-offs of its designs, including its popular Stan Smith model. Conversely, Skechers sued Steve Madden last year, seeking an injunction against its Setta line, which was sold under the Steven by Steve Madden brand.
No doubt there are only just so many ways to make a shoe, and unless there’s something truly unique about a design, it seems the courts will not uphold the allegations of infringement.
Read more: Skechers Wins a Decisive ITC Ruling Over Nike | Investopedia http://www.investopedia.com/stock-analysis/062816/skechers-w…
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I don’t do trademark or patent, but protection from these only go so far as they are in restraint of trade. You can legally reverse engineer a patent for example (probably more involved process than Skechers would want to try), and there are exacting requirements for things like Trademarks.
This lawsuit will take years, and as cautiousone specifies, the trend for the shoe will probably end by the time the suit is done.
If Skechers tries to copy Air Jordans or what not, then I’d be worried as those are flagship products with huge damage potential, but these tertiary models are a few million here, a few million there for a billion dollar corporation.
The details of the lawsuit are not knowable by us as that is why they hire expensive lawyers with huge staffs to litigate such things. For every allegation, there is a defense, a nuance, a detail, etc. I know the law as well as anyone, and I have given up predicting lawsuits like this. Even in my own cases I have had 3 appeals to my states Supreme Court this year, winning all 3 because I know what the law is, but the trial judge appeared to not know what the law was. Did not stop the trial judge from ruling wrong anyways at trial.
Tinker