Fashion Law: Converse Victorious in Trademark Suit
In October Converse, the iconic brand behind the always trendy Chuck Taylor All Star sneakers, filed a lawsuit against 31 retailers and manufacturers alleging they all infringed on some of the brand’s trademarks shown in its Chuck Taylor All Star shoe design. Converse claimed that all defendants copied multiple design elements of this shoe to include its mid sole trademark design made up of a toe bumper and a top cap in addition to either an upper stripe and/or lower stripe on the base of the shoe.
Last week Chief Administrative Law Judge Charles E. Bullock ruled in favor of Converse in this International Trade Commission case. He issued a notice regarding an initial determination stating a violation of section 337 of the Tariff Act of 1930 in the importation into the US and sale of certain Converse trademark.
Several of the companies targeted in the lawsuit included Tory Burch, Aldo Group, Ralph Lauren Corp, Hennes & Mauritz, Zulily, Fila USA, and Iconix Brand Group—all of these brands have since entered into settlement agreements with Converse.
While Bullock failed to mention details or even the specific companies targeted in his notice, he did mention the court’s decision to solicit public comments in the case relating to the judge’s recommendation of a general exclusion order that directs US Customs and Border Protection to stop all of the infringing footwear products from entering the US. Additionally, plans to implement cease and desist orders against the defendants that were found guilty of infringement are in the pipeline.
A spokesperson for Converse commented: “The Chief Judge of the International Trade Commission validated Converse’s intellectual property rights in the iconic Chuck Taylor All Star and supported our right to enforcement. The original Chuck Taylor All Star and its unmistakable look have been a hallmark of the Converse brand for decades.”
Other companies outlined in the lawsuit include Wal-Mart Stores Inc., Skechers US, and Highline United LLC, all refused to settle and instead challenged Converse’s trademark assertion. In a five day hearing Converse argued its possession of a valid trademark that was being injured by all those infringing on its designs.
Counsel for Converse, James Adduci commented: “… we will show that Converse has a domestic industry that is threatened by substantial injury from U.S. sales of the accused sneakers,” he added. “Not only has Converse lost sales and profits associated with those sales, but its brand has suffered due to the unwanted association that U.S. consumers are making between Converse brand and that of the infringers.”
The company revealed that knockoffs of their popular “Chucks” was once a rarity, but has become more widespread since 2008.by