Over the next five days, Converse and the firms it has accused of copying its design, are in hearings at the International Trade Commission arguing their sides and presenting evidence.
“During the first day of a five-day evidentiary hearing, ITC officials surmised that Converse did not establish “secondary meaning” and does not have a valid midsole trademark — giving Converse rivals Skechers Inc., Wal-Mart Stores Inc. and others a victory in the first round.
‘It’s the staff’s view that the issue is whether the Chuck Taylor toe cap, toe bumper and midsole stripes on their own are source-identifying and have therefore acquired a secondary meaning,’ an ITC staff official said at the hearing. ‘It’s the staff’s belief that the evidence will show that they are not and that therefore the alleged CMT [Converse midsole trademark] is not a valid and protectable trademark.'”
Back in October, Converse filed a complaint with the ITC against 34 companies alleging they’d broken a 1930s law that prevents imports of copyright infringed goods. It argued key elements like the midsole and bumper toe are trademark elements of the Chuck Taylor.
While many of the named firms have settled with Converse out of court, Wal-Mart, Skechers, Highline United and New Balance — which owns P.F. Flyers — have said they’re planning to fight the suit. Tory Burch, Ralph Lauren and Aldo are among the brands that have settled.
Marshall Leaffer, intellectual property law expert at the Indiana University said Wal-Mart has the bank account and willpower to keep the litigation going. “Wal-Mart will likely argue that these are ornamental and the consumer themselves won’t look at this as one origin. But watch Wal-Mart, they’ll be in this for the long haul and they’ve done it before,” Leaffer said.
He referenced the Wal-Mart and Samara Brothers lawsuit from 1999, when the Supreme Court ruled in favor of Wal-Mart, which had been reproducing apparel similar to the Samara children’s line. The court agreed certain elements of the apparel were not ones that could be trademarked and copyrighted and that on their own, didn’t define the Samara brand.
By Nov. 17 a judge overseeing the case will rule on the complaint if it isn’t settled by then, and if the ITC declines to review the ruling, it will stand.