Converse initially filed a complaint with the ITC in October 2014, alleging that 31 companies, including Skechers, had infringed on their trademarks for the Chuck Taylor All Star. The majority of companies have settled outside of court, with the notable exceptions of Skechers and Wal-Mart.
On November 17, Converse released a statement saying that the Chief Judge of the ITC had “validated Converse’s intellectual property rights in the iconic Chuck Taylor All Star and supported our right to enforcement.”
Bloomberg BNA confirmed this account, reporting that Administrative Law Judge Charles Bullock upheld Converse’s complaint that alleged violations of the Tariff Act of 1930, saying that the importation and sale of these footwear products infringes on the common law trademarks asserted by Converse.
Bloomberg said that this initial determination would then move on to the full ITC for the next decision.
Skechers then released a statement on November 19 asserting that it had won a favorable ruling in the Converse lawsuit.
Skechers reported that Judge Bullock ruled that “Skechers’ Twinkle Toes and Bobs product lines do not infringe Converse’s registered trademark for the Chuck Taylor midsole.”
They went on to say that the judge had ruled that Converse has no common law trademark rights in the Chuck Taylor midsole because the design is not distinctive, famous or in possession of secondary meaning.
Michael Greenberg, president of Skechers, said in a statement, “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.”
Converse issued a statement following Skechers, stating that Judge Bullock had found that Skechers products were, in fact, infringing on the Converse trademark, “The Chief Judge found infringing products among all remaining respondents, ruled that three of Converse’s federally registered trademarks are valid and enforceable, and recommended a General Exclusion Order. We remain confident in the merits of our case and that the respondent companies will be held accountable for the knockoffs they produce.”
This article has been updated.