IPStaffAttribute

On June 23, 2016, the International Trade Commission (ITC) barred any company from importing shoes into the United States that copy Converse’s “Chuck Taylor” diamond-patterned outsole and bottom of the shoe. While this is a win for Converse, the decision falls short of a complete victory for Converse.

In October 2014, Converse filed a complaint with the ITC requesting a general exclusion order, claiming there was rampant copying of the midsole and outsole of the iconic shoe.  More than one billion pairs of Chuck Taylor shoes have been sold since their introduction in 1917.  Converse released a statement saying it “brought its case to the International Trade Commission to prevent customer confusion, to protect legitimate intellectual-property rights, and to stop the sale of knockoff Chucks.”

One of the key issues the ITC considered was whether a specific feature of the “Chuck Taylor” had become so well-known that it had developed what is known as secondary meaning.   In cases where secondary meaning is established, protection may be afforded to the user of an otherwise unprotected mark.  In order to establish secondary meaning, the holder of the mark must show that, through advertising or other exposure, the mark in question has come to signify that the particular item is produced or sponsored by that mark holder.  In other words, consumers have come to associate the mark with a certain product.

“The Commission has determined that a general exclusion from entry for consumption is necessary to prevent circumvention of an exclusion order limited to products of named persons because there is a pattern of violation of section 337 and it is difficult to identify the source of infringing products,” the ITC order reads.

While the ITC’s decision on the outsole was a win for Converse, the ITC went on to state that Converse does not hold valid trademark rights to the midsole.  This is a win for defendants like Skechers and Walmart, who claimed, “Converse is using the suit to extort monetary settlements.” Brian Fogarty, senior director, global intellectual property litigation at Nike (which owns Converse), stated, “While we do not agree with all of the ITC’s findings, we feel confident our rights will be vindicated on appeal. This is but one step in a long process.”

In addition to the complaint filed with the ITC, Nike Converse Inc. filed a lawsuit in the U.S. District Court in Brooklyn against 31 companies and retailers, including Walmart, Ralph Lauren, Tory Burch, and Skechers, claiming they copied the rubber “bumper” that runs around the front of the shoe, the “toe cap” on the top of the shoe above the bumper, and lines or stripes running around the sides of the shoe.