Converse Sues 31 Companies, Alleges Infringement Of Trademark In “Chuck Taylor” Shoe Design

On October 14, 2014, shoe manufacturer Converse, Inc (Converse) filed lawsuits in the United States District Court for the Eastern District of New York (the Court) against 31 companies (together, the Defendants) claiming trademark infringement, dilution, unfair competition, and unfair business practices under Federal and New York State law. Converse alleges that the Defendants, which include Sketchers, FILA, Ed Hardy and Kmart (to name a few), infringe and dilute Converse trademarks, and compete unfairly with Converse in the shoe market, because the Defendants promote and sell shoes that bear the trademarked midsole design of classic Converse All-Stars (or a confusingly similar midsole design). NIKE Inc. is the parent company of Converse, having acquired it out of bankruptcy in 2003. In its complaint, Converse claims to have sold shoes bearing their trademarked midsole design since 1932. Converse All-Stars were first popular as a basketball shoe thanks to Chuck Taylor, a former basketball player and Converse salesman who promoted them. Converse All-Stars later came to be known by the name “Chuck Taylors”, or simply, “Chucks”. Over time, Chucks were adopted as a casual sneaker of broad appeal, but were particularly popular in the “greaser” subculture and in the American punk and rap scenes of the 80s and 90s. [source: http://www.converse.com/landing-all-star?CSINT=HP_brand_allstar] In its complaint, Converse relies in large part on one of its registered trademarks, US Trademark Registration No. 4,398,753, which describes the trademark as:

“the design of 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”.

Protecting fashion design elements under trademark law can be challenging since trademark protection does not extend to functional features. In the world of clothes and shoes, the difference between functional versus aesthetic can be quite subjective. Under US law, an element is considered functional “if it is essential to the use or purpose of the article or if it affects the cost or quality of the article” (Qualitex Co v Jacobsen Products Co, 514 US 159 (1995) at pg 165, citing Inwood Laboratories Inc v Ives Laboratories Inc, 456 US 844 (1982) at pg 850 note 10). Given this language, it will be interesting to see where the Converse design elements fall on the spectrum of functionality. For those design elements determined to be non-functional and otherwise protectable under trademark law, the Court will then determine whether use of those elements by the Defendants would (i) result in a likelihood of confusion by consumers as to the source of the shoes, or (ii) result in loss of distinctiveness in those trademarked elements for Converse. Of note, Converse has also filed a complaint with the US International Trade Commission (ITC) alleging unlawful importation into the US of the Defendants’ allegedly infringing goods. Unlike US District Courts, the ITC does not have jurisdiction to award monetary relief for a finding of trademark infringement. The usual remedy available from the ITC is an injunction barring the import of infringing goods. Litigation before the ITC on IP-related matters is on the rise due to the relatively quick docket and the increasing power of an import ban when the infringing goods are manufactured abroad, which is the case for most clothing and shoes. Summary by: John Lucas