Converse’s Iconic Branding and the Test of Time
Converse sues 31 major companies for infringing on the Chuck Taylor.
What does that mean for trademark regulations moving forward?
The Industrial Designers Society of America (IDSA) has filed an amicus brief in Converse, Inc.’s Feb. 1, 2017 federal circuit court appeal of the June 2016 International Trade Commission (ITC) decision on trademarks on the iconic Chuck Taylor All Star shoes.
An amicus is a “friend of the court”: someone who is not a party to a case and is not solicited by a party, but who assists a court by offering information that bears on the case.
The initial case was filed in 2014 in the US District Court by Converse against 31 major companies, including big names such as Ralph Lauren, Walmart, New Balance and Sketchers for infringing on Converse’s signature Chuck Taylor shoe.
Converse believes that all of these companies infringed on their iconic design by :
1. copying the rubber “bumper” running around the front of the Chuck Taylor shoe;
2. a “toe cap” on the top of the shoe above the bumper;
3. and lines or stripes running around the sides of the classic kick.
In 2003, Converse shoe brand’s 95th anniversary, Nike bought the company for $305 million. They also pursued an additional complaint with the International Trade Commission (ITC) to prevent infringing shoes from entering the United States. Thus, this lawsuit is also integral for Nike and all other patent holders and designers alike. At the time, Converse had annual sales of just over $200 million. Fast forward 13 years to Nike’s fiscal year 2016 — Converse sales have ballooned to nearly $2 billion, or about 19% growth per year on average.
The ITC “voted to institute an investigation of certain footwear products. The products at issue… are shoes that allegedly infringe or dilute registered and common law trademarks used in connection with certain Converse shoes, such as the Chuck Taylor All Star Shoe…The Complainant requests that the ITC issue a general exclusion order, or in the alternative a limited exclusion order, and a cease-and-desist order.”
In November 2015, a judge found that Nike Converse holds two valid trademarks on the outer sole layout of the Chuck Taylor shoe.
In June 2016, the ITC issued a ban on any shoe that infringes those two trademarks on a diamond-patterned outsole, or shoe bottom. But the ITC found the third Converse midsole design invalid—reversing the administrative law judge’s decision on that third point. The ITC said the midsole design lacked “secondary meaning,” because consumers no longer associated the bumper toe, mid-stripe and cap toe with only the Chuck Taylor shoe.
On Feb. 1, 2017 Converse appealed that ITC reversal—calling it a “dangerous” decision that would “destroy an iconic American brand and reward copiers.”
However, the ITC noted that that since the 1920s many companies had sold shoes with the same midsole design. Making it unlikely that consumers would think that shoes having the design came from one source.
Most, but a few, companies in the initial fight agreed to settle. But Walmart claimed, “Converse is using the suit to extort monetary settlements” and in a filing, stated that “Constripes” are “actually or aesthetically functional” and “are not subject to trademark protection.” Skechers and New Balance also stayed in the fight.
IDSA concluded that they respectfully urge the Courts to hold that:
1. Where only injunctive or other prospective relief is requested by the owner of a registered trademark, an evaluation of the secondary meaning (or other elements of validity) of the mark should be evaluated only at the time of suit.
2. The burden of proof is shifted to the responding party to prove a lack of secondary meaning, or other grounds of invalidation, for a mark that has been registered in accordance with the Lanham Act, since the registration serves as prima facie evidence of the validity of the registration..
Do you think that this case will be beneficial for Nike just as much as it is for Converse? Let us know what you think below in the comments.