Converse Sues Over Trade Infringement

Converse is going on the offensive.

The North Andover, Mass.-based brand – a division of Beaverton, Ore.-based Nike Inc. – filed lawsuits today alleging copyright infringement on its Chuck Taylor style. The move is part of what Converse Inc. President and CEO Jim Calhoun told Footwear News was “part of one strategy to stop infringing behavior once and for all.”

The suits name 31 manufacturers and retailers, including Skechers, Wal-Mart, Kmart, Ralph Lauren, Tory Burch, Zulily, Aldo Group, Fila, H&M, Highline United’s Ash brand, Kitson, and Iconix’s Ed Hardy brand.

At issue are trademarks relating to the brand’s midsole and outsole, which Calhoun said had been obtained in 2013, as well as common-law trademark rights obtained by long-term use.

And while the Chuck Taylor is the lead style that uses them, these components recur in many other models, Calhoun said.

“It’s the poster child, but we do use the elements on other products. The sound bite is about the Chuck Taylor, but this is about the Converse brand as well,” he said.

Calhoun said the brand noticed an uptick in designs from other brands that it considered infringements on its trademark beginning with Converse’s centennial in 2008.

“We started to notice a larger and larger explosion of what we call knockoff styles as the iconic look started to be copied,” he said. “We have conducted a number of cease-and-desist letters, more than 180 letters, and seized counterfeit product, but they didn’t deliver the results we had hoped.”

Calhoun said the suits are intended to both stop anyone domestically from creating product featuring the at-issue details and prevent any knockoff product from being imported into the U.S.

“It’s important to note that this case, for us, is not really about any one of those [named] companies nor about 31 as an absolute number, but about anyone who violates our marks,” he said. “We want to put a full stop to the 31 we are aware of, and to anyone else in present and future.”

The lawsuits were filed in the Eastern District of New York and with the International Trade Commission.

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