[co-author: Gabriel Guerra Medellin]

In a recent decision that illustrates the relevance of timing in evaluating the question of secondary meaning, the Court of Appeals of the Federal Circuit breathed new life into Converse’s “Chuck Taylor” sneaker design trademark by vacating an earlier ruling by the International Trade Commission (ITC) invalidating protection for that same mark.

Background

Relying upon use of its sneaker design dating back to 1946, in 2013 Converse obtained a trademark registration for its “Chuck Taylor” sneaker design described as “the design of the two stripes on the midsole of the shoe, the design of the toe cap, the design of the multi-layered toe bumper featuring diamonds and line patterns, and the relative position of these elements to each other”. Shortly thereafter, Converse filed suit before the ITC against dozens of U.S. companies seeking to exclude the importation of sneaker designs and argued they infringe upon and dilute their product design trademark.

In 2016, the ITC invalidated Converse’s trademark registration and rejected their claim of common law trademark rights for failure to demonstrate secondary meaning. Relying on the Supreme Court’s guidance in Wal-Mart Stores, Inc v. Samara Bros., 529 US 205, 213-214 (2000), the ITC held that Converse’s mark, a product configuration, could not be considered inherently distinctive as a matter of law, and thus was not entitled to either registration or protection as a trademark absent a showing that the configuration had acquired distinctiveness in the minds of the relevant consuming public. Marketplace exclusivity is an important prerequisite for protection because where design elements are widely used and common, they cannot identify a particular source.

The ITC was persuaded in its determination by evidence offered by the defendants reflecting that various elements of the Chuck Taylor shoe design were allegedly in use by numerous third parties prior to the PTO’s grant of registration. For the ITC, such evidence established that a significant percentage of average consumers associated the Chuck Taylor design with multiple sources, and not just with Converse. The ITC found that this renders the design incapable of identifying a single source and thereby devoid of the required secondary meaning for protection.

The Appellate Court disagreed

Last week, on appeal, the Federal Circuit vacated the ITC’s ruling finding the ITC had erred both in its invalidity and infringement determinations, and directing that the proper time period for consideration of the presence or absence of secondary meaning was in the five years leading up to Converse’s application filing date. “Uses older than five years should only be considered relevant if there is evidence that such uses were likely to have impacted consumers’ perceptions of the mark as of the relevant date.” The ITC’s focus on older third party use evidence was improper according to the Federal Circuit.

Upon remanding the case back to the ITC, the Court mandated that Converse establish, without the benefit of the presumption of validity that would follow from a federal registration, that its mark had acquired secondary meaning prior to the first infringing use by each defendant. The Court rejected the defendants’ arguments that Converse had waived any claim that its mark had acquired secondary meaning without the benefit of that presumption. In addition, the ITC was directed to weigh Converse’s “length, degree, and exclusivity of use” in combination rather than as separate factors and to more rigorously evaluate whether the allegedly infringing products were “substantially similar” to the protected trade dress in the eyes of “an ordinary observer”.

U.S. Circuit Judge Kathleen M. O’Malley dissented on multiple grounds emphasizing that the majority had ruled on issues it need not address in the appeal. In particular, she argued that the majority should not have ruled on the issue of the validity of Converse’s trademark registration, as the timing of its issuance was long after the defendants sold their products.

Comment

The Chuck Taylor sneaker was first introduced to the marketplace as a basketball shoe in 1932, regaining popularity and market share in the 1980s and 1990s. As a landmark of popular culture, the Chuck Taylor was imitated by numerous designers and derivative products – a fact on which the defendants relied to argue that the design was essentially a victim of its own success and thereby no longer associated with a single source. The flip side of such an argument, of course, is to question the rationale behind and value of incorporating these same features into new products unless they continue to convey the positive associations and cool factor of their original source.

The roster of parties that will return for consideration before the ITC is much reduced from the original 30 plus defendants – with only New Balance, Sketchers, and HU Liquidation remaining in the fight. Converse now can continue these proceedings with tailwind supporting its case. Stay tuned.

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