Skechers does not want Golden Goose to bag a trademark registration for the star design that appears on the side of its pricey sneakers. In response to the trademark application that Golden Goose filed with the U.S. Patent and Trademark Office (“USPTO”) in August 2017, in which it is seeking a federal registration for “a tilted five-pointed star with the top point cut off and the tip of the lower right point cut off” for use on footwear and leather goods, Skechers has called foul.
In an opposition that it filed with the USPTO in July, Skechers claims that Golden Goose’s quest to claim exclusive rights in its specific star trademark should be swiftly shut down for a whole host of reasons, including because the star mark allegedly fails to function as a trademark, i.e., a symbol that serves to identify a single source. Counsel for Manhattan Beach, California-based Skechers claims that Golden Goose’s star “mark is purely ornamental or, alternatively, is merely ornamental without acquired distinctiveness and therefore does not function as a trademark.”
Instead of serving a source-identifying function, Skechers claims that the mark “as a whole, is aesthetically functional in that its use is merely to decorate shoes,” thereby, preventing it from and “functioning as a trademark.”
Beyond that, Skechers claims that “due to unpoliced, or unsuccessfully policed, third-party uses of similar marks” to Golden Goose’s star, “the public cannot and does not identify [Golden Goose] as the single source of the goods claimed in the application,” namely, footwear and leather goods, which is another reason why the application should be tossed out.
Finally, Skechers claims that it “and others have a competitive need to decorate products, including shoes and accessories, with five-pointed star designs with one or more points cut off.” The brand asserts that of the “3,000 [or so] styles of shoes [that it sells] throughout the world at any given time … some include one or more tilted five-pointed stars with one or more points cut off.”
“It is not commercially feasible,” Skechers argues, “to design an over-all design including five-pointed stars without some tilting of stars, and without one or more points cut off at seam lines.” In order to “avoid cutting off points in an over-all star design would require expensive engineering, limiting the number of stars that could decorate the shoe.”
Meanwhile, Venice, Italy-based Golden Goose, which was launched in 2000, asserts in its application that it has been using the unique star design in connection with its products consistently for years, and points to an existing registration for the mark, which was filed in 2014 and granted by the European Union Intellectual Property Office in May 2017.
UPDATED (June 14, 2019): On the heels of Golden Goose fighting back in the answer that it filed with the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (“TTAB”), in which it denied the bulk of Skechers’ claims and/or asserted that it lacked sufficient knowledge to either affirm or deny its more-mass-market footwear counterpart’s claims, it seems the two companies are attempting to settle their differences outside of the purview of the TTAB. Skechers filed a consent motion to suspend the proceedings temporarily in light of ongoing settlement negotiations. According to Skechers’ filing, “The parties are actively engaged in negotiations for the settlement of this matter. Skechers U.S.A. Inc. and Skechers U.S.A. Inc., II requests that this proceeding be suspended for 90 days to allow the parties to continue their settlement efforts.”
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