Two Southern California shoe companies have gone to war over a checkerboard pattern,even though the black-and-white design can be found on more than a dozen other shoes.
But the issue is so important to Skechers USA Inc. that it has hired high-profile lawyers in its fight with Vans Inc. over the right to put the squares on shoes.
Lawyers for Cypress-based Vans wrote in court papers: “Skechers wants to walk in Vans’ shoes.”
Skechers executives wouldn’t comment.
The dispute began early this year when Manhattan Beach-based Skechers introduced a slip-on shoe that resembled Vans’ classic canvas shoe that for a generation has been popular among the surfing and skateboarding crowd. It was the shoe of choice for “Fast Times at Ridgemont High” character Jeff Spicoli, portrayed by Sean Penn.
Anticipating a legal challenge from Vans, Skechers filed a pre-emptive suit in March.
Michelle Cooke, an intellectual property lawyer not involved in the case, said this type of dispute has become more common as fashion cycles have become even shorter.
“Some companies are willing to push the envelope and risk a lawsuit because they are only interested in putting things on for this season,” said Cooke, a partner in the Century City office of Steptoe & Johnson LLP. “Next season they’re moving on.”
Skechers appears to have already moved on from the trend and has stopped selling the shoes in some of its main stores and relegated them to discount outlets.
The Skechers store at the Beverly Center shopping mall in Los Angeles was selling a number of slip-on shoes but none with the checkerboard pattern.
“We had them a couple of months ago but we don’t have them anymore,” a saleswoman said. “We only keep the latest designs here. You should check our outlets.”
But Skechers is continuing with the lawsuit.
In November, Vans sought a preliminary injunction that would have barred Skechers from selling the shoe. Federal Judge Dale Fischer rejected it.
In seeking the injunction, Vans claimed that the Skechers’ line of slip-on shoes not only violates its registered trademark for “a checkerboard design covering the top, or toe vamp, of a shoe” but also shoe soles “covered in geometric pattern composed of diamonds and six-pointed stars.”
Early Ruling Against Vans
In the judge’s order refusing to grant a preliminary injunction, she acknowledged that Vans has advertised the checkerboard pattern so that it could be identified with the brand.
“However, the likelihood of confusion is diminished by the widespread use of checkerboard mark shoes,” the judge wrote.
Skechers had submitted evidence of 13 other shoemakers that use the checkerboard patterns on their shoes.
The judge also said that Vans had not established that its trademark of the checkerboard design was extensive enough to prohibit Skechers from using it.
In reference to the pattern on the bottom of the shoe, the judge said there was little danger of confusion between the Vans and Skechers models: “In most situations, the sole would not be visible as it appears on the bottom of the shoe.”
The Vans checkerboard slip-on dates to 1981, and remains popular among teens. It’s been worn by characters on teen TV shows such as Fox’s “The O.C.,” which ran from 2003 to 2007.
“We have always defended and will continue to defend our registered trademarks, which uniquely identify Vans products and separate our brand from others in the market,” Vans spokesman Chris Overholser said in an e-mail.
“Vans is saying the pattern is not just some cool design that is nice to look at, but something that consumers identify with them,” Cooke said. “They are saying that significant sums of money over the years have been invested to educate consumers so when they see that pattern they think of Vans.”
Vans is part of North Carolina’s VF Corp., which acquired the company in 2004 for $396 million.
In the third quarter, VF, which owns brands such as Wrangler and 7 For All Mankind, said the Vans brand recorded double-digit revenue gains.
“Vans has done pretty nicely as the skate category has come back,” said Christopher Svezia, an analyst at Susquehanna Financial in New York. “It has been a key category this year.”
Skechers has also seen an increase in sales in recent months. Revenue has increased for the past 15 months, and third-quarter sales of $395 million were a company record.
But according to analysts, much of the company’s success stems from its ability to quickly react to popular trends, such as the resurgence of the skater segment.
“Skechers has done a nice job over the years taking those trends they are seeing in the marketplace and making them its own,” Svezia said.
When Skechers executives realized Crocs were only sold in certain locations, they designed a gardening shoe that they shipped to other stores.
The practice has engendered some acrimony among competitors.
In January, Japan’s Asics Corp. sued Skechers alleging trademark infringement. The lawsuit was settled last month.
In a sign Skechers may be ready for a bigger fight with Vans, the company is represented by Morgan Chu, one of the country’s leading intellectual property litigators. Chu replaced Daniel Petrocelli,best known for his victory over O.J. Simpson in a civil suit.
Vans is represented by lawyers at Sonnenschein Nath & Rosenthal LLP.
Combs is staff writer with the Los Angeles Business Journal.
