Iconix and Fila Settle in Converse Lawsuit Saga

Fila USA and Iconix Brand Group Inc. have joined the list of companies that have settled with Converse Inc. in an ongoing trademark-infringement case before the U.S. International Trade Commission.

According to documents filed with the ITC, Iconix agreed, in a consent-order stipulation, “not to import, sell for importation, or sell in the United States after importation any footwear products that infringe the trademarks asserted against Iconix, except under consent or license from [Converse].”

ITC documents also indicate that Fila and Converse have come to a settlement: Fila has also agreed not to import, sell, distribute or otherwise transfer the infringing products.

Converse generated major buzz last October when it filed a landmark suit against 32 companies alleging infringement against its classic Chuck Taylor All-Star styles.

The suit named industry heavy hitters Kmart Corp., Wal-Mart Stores Inc., Skechers USA Inc., Aldo Group, Zulily Inc. and Tory Burch.

Since the highly controversial filing, 11 companies — including Ralph Lauren Corp., Zulily and Tory Burch — have settled.

Wal-Mart, however, has vowed to fight back and in late March submitted an opposition to Converse’s complaint with the ITC .

In its filing, Wal-Mart disputed Converse’s ability to claim infringement on what it calls a “functional” aspect of a product and further accused Converse of using the suit to “extort monetary settlements.”

“Because toe caps, toe bumpers and stripes are actually or aesthetically functional, they are not subject to trademark protection. Converse has touted the functional features of its shoes in its advertising….” Wal-Mart stated in the filing.

The retail behemoth went on to argue that “Converse has not had exclusive use of the toe cap, toe bumper and midsole striping for at least 50 years, if ever.”

While the list of companies settling with Nike Inc.-owned Converse is growing, with retail giant Wal-Mart willing to go toe-to-toe, the saga is likely to continue for some time.

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