Converse Loses Its Midsole Amidst ITC Trademark Battle
What Made News?
Last month, the US International Trade Commission issued a decision invalidating a trademark for Converse’s iconic Chuck Taylor sneaker. Although Converse did win some of its claims, the ITC decision overall represents a potentially significant setback for Converse after the company took aggressive action to try to stop the sale of shoes that Converse claimed infringed its rights in the Chuck Taylor design.
According to Converse, there has been an increase in recent years in the number of sneakers resembling the Chuck Taylor, as the sneaker regained appeal in the consumer market. To protect the design of the shoe, Converse filed complaints in federal court in October of 2014 against more than 30 companies, claiming that the companies infringed Converse’s rights in the Chuck Taylor design by selling shoes with similar design elements. Converse based its infringement claims on three trademark registrations covering design elements of the Chuck Taylor:
- US Registration No. 4,398,753 (covering “footwear” in Class 25) for the two stripes on the midsole of the shoe, the design of the toe cap, the design of the multi-layered toe bumper featuring diamonds and line patterns, and the relative position of these elements to each other (the “'753 Trademark”);
- US Registration No. 3,258,103 (covering “footwear” in Class 25) for the three-dimensional tread design located on the outsole of the shoe (the “'103 Trademark”); and
- US Registration No. 1,588,960 (covering “athletic footwear” in Class 25) for the three-dimensional sole design of the shoe, including the lining and stippling elements of the sole design (the “'960 Trademark”).
Around the same time, Converse also filed a complaint with the ITC seeking to prevent companies from importing allegedly infringing shoes into the US.
Why did Converse File a Complaint with the ITC?
The ITC offers some unique remedies that federal court generally cannot offer. Even if Converse had been successful in each of its 30 lawsuits (three of which remain pending), the resulting court decisions would only have applied to the specific companies Converse sued. While such decisions would send a warning to other companies and would likely have discouraged the sale of shoes with arguably similar designs, the decisions would have no binding effect on companies that were not subject to a lawsuit. Rather, Converse would have been forced to bring each additional company to court to seek relief.
In contrast, had the ITC found that each of Converse’s trademarks for the Chuck Taylor were valid, the ITC could have issued an order preventing any infringing shoe from being imported into the United States — even for companies that were not listed in the original complaint. Thus, the ITC ruling could have provided Converse with broader protections that would ensure continued enforcement of Converse’s trademark rights.
The ITC Decision
On November 17, 2015, an ITC Administrative Law Judge reviewing Converse’s complaint issued a preliminary decision, finding that all three of Converse’s marks were being infringed. As a remedy, the ALJ recommended that the ITC issue a “general exclusion order” prohibiting the importation of all footwear products that infringed these trademarks.
Upon review of the ALJ’s preliminary decision, the ITC affirmed-in-part, reversed-in-part, and vacated certain portions of the decision. Most notably, the ITC reversed the ALJ’s finding with respect to the ‘753 Trademark, finding that the trademark is invalid because it lacks secondary meaning. In order for secondary meaning to exist, the public must associate the design of the product with the source that produces the item. Here, the ITC found that the public does not solely associate the design elements of the ‘753 Trademark with Converse because competitors have used similar designs for more than 80 years. Nonetheless, in a partial victory for Converse, the ITC affirmed the ALJ’s finding of infringement with respect to the ‘103 and ‘960 Trademarks.
What Does This Mean for Converse?
The ITC decision narrows the scope of protection that Converse can claim in the Chuck Taylor. In particular, because the ITC ruled that the ‘753 Trademark lacks secondary meaning, it will be much more difficult for Converse to claim exclusive rights to sneaker design elements, such as the toe cap and multilayered toe bumper with the diamond and line patterns. That said, Converse is likely to appeal the ITC’s ruling, and thus companies with an interest in the decision should proceed cautiously until the case is fully resolved. In addition, despite the ITC’s finding that the ‘753 mark is invalid, Converse continues to own a federal registration for the mark, the status of which is unclear after the ITC’s decision. Notably, the ITC also affirmed Converse’s exclusive rights in the design of the outsole of the Chuck Taylor as protected by the ‘103 and ‘960 Trademarks.
Arent Fox will continue to monitor issues related to trademark and trade dress. Please contact Anthony Lupo, Ross Panko, Luna Samman, or Dan Jasnow with questions.