A New Ruling Just Reignited Converse’s Infamous Trademark Saga

A federal court today reversed a ruling in a years-old Converse case that saw the brand go up against 30 shoe brands and retailers over its iconic Chuck Taylor designs.

In a new ruling, the appeals court overturned a lower court’s decision that Converse lacked enforceable rights on the popular shoe.

“We hold that the [U.S. International Trade Commission] erred in applying the wrong standard in aspects of both its invalidity and infringement determinations,” U.S. Circuit Judge Timothy B. Dyk wrote in an opinion, adding that the trade board “relied heavily on evidence — both as to Converse’s use and the use by competitors — far predating the relevant timeframe.” (The court found the ITC had gone back decades for evidence in the case when it should have looked back only five years.)

The case dates back to October 2014, when Converse filed suit against dozens of shoe sellers including New Balance, Fila, Tory Burch, Walmart and Skechers alleging they infringed on its classic sneaker style’s bumper toe, striped midsole and toe cap. The brand argued that companies were violating a common-law trademark protected in a trade-and-tariff code by importing “knockoff” sneakers with similar elements.

While most companies opted to settle out of court, Skechers and New Balance notably chose to fight the suit. In June 2016, the brands scored a victory when the ITC ruled that the trademark elements Converse sought to enforce were invalid.

“We are pleased that the ITC invalidated Converse’s claimed trademarks in the Chuck Taylor midsole design,” Skechers president Michael Greenberg said at the time. “Countless companies, including Skechers, have used the same midsole design in canvas court-style sneakers for decades.”

Despite the apparent blow of part of today’s ruling, in an email exchange with FN, Skechers and New Balance both pointed to aspects of today’s ruling that could be positive for their respective brands.

“We are pleased that the Federal Circuit has recognized that Skechers’ longtime sales of the shoes that are in dispute should be a significant consideration in Skechers favor,” Skechers said in a statement to FN today. “We are confident that today’s decision is a stepping stone to a favorable outcome in the litigation between Skechers and Converse.”

Similarly, New Balance said it was “pleased” with certain facets of today’s federal court ruling.

“New Balance is pleased with the Federal Circuit’s correct interpretation of the law, finding Converse’s trademark registration in 2013 encompassing the combination of a toe cap, toe bumper and midsole stripes does not entitle Converse to a presumption of validity where these design elements appeared on New Balance’s iconic PF FLYERS shoes for many years prior,” a spokesperson for the brand said. “On remand, with the Federal Circuit’s clear guidance on the law, we are confident the International Trade Commission will find Converse’s alleged trademark invalid.”

 

 

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