The latest chapter in the saga came down recently with a decision from the Commission on remand from the Federal Circuit, in which the ITC ruled that elements of Converse’s claimed trade dress was indeed protectable, but that the accused footwear still in controversy are non-infringing. As of the date of this article, the decision has not been appealed.
Between 2010 and 2012, Converse filed three United States Trademark Applications to register trade dress in the upper designs of its Chuck Taylor sneaker, alleging first use dates between 1946 and 1962. (At the time, Converse already owned trademark registrations in the outsole and collar patch trade dress, which predated Converse’s acquisition by Nike in 2003, but it had not sought to register its midsole and upper designs.) Those three applications matured to registration between 2011 and 2013. In October 2014, Converse filed a complaint before the International Trade Commission to enjoin importation of accused footwear by 31 respondent companies, alleging that the footwear in question, some of which had been sold for decades, infringed Converse’s newly registered trade dress.
In 2016, the ITC upheld the validity and enforceability of Converse’s outsole registrations, but invalidated Converse’s alleged trade dress in its upper designs, finding that the latter did not have the secondary meaning required to function as trade dress. The ITC banned the entry of some of the footwear that used Converse’s diamond-patterned outsole design, but that did not apply to the majority of respondents. Converse appealed to the Federal Circuit. In 2018, the Federal Circuit vacated the ITC decision, finding that the ITC applied an incorrect standard for finding secondary meaning, and also erred by not distinguishing between accused footwear launched before and after the 2013 registration date of Converse’s main asserted trademark registration claiming trade dress rights in its Chuck Taylor upper design.
On remand, the ITC issued a decision with respect to Converse’s alleged rights and the claims against the remaining respondents, including Skechers, New Balance, and Highline (the owner of the Ash brand). In the ITC’s newly issued decision, the Commission ruled that Converse owns valid common law trade dress rights and valid trademark registration for the Chuck Taylor upper design but found the footwear produced by Skechers, New Balance, and Highline to be non-infringing. In an odd twist, the ITC affirmed its earlier ruling that some of the respondents that had previously defaulted had infringed Converse’s intellectual property rights and were rightly prohibited from importing their footwear into the United States.
In finding Skechers’ footwear to be non-infringing, the ITC acknowledged the similarity between the footwear designs but found that the likelihood of confusion was undercut by the determination that Skechers has a “brand name that is well-known and recognized by consumers” and that their use of “branding, labeling, and marketing significantly reduces the likelihood of confusion,” a finding that is likely to be controversial. For New Balance’s PF Flyers footwear, the Commission found the design itself to be non-infringing due to a lack of substantial similarity to the asserted trade dress. And with respect to Highline, the ITC relied heavily on the fact that Highline’s accused higher-end shoes are sold to a “more sophisticated” set of consumers at a higher price point, that the accused footwear was being sold for seven years before Converse’s upper trade dress registration issued, and also that Highline has a very small market share compared to Converse and the other respondents.
Procedurally, Converse may once again appeal to the Federal Circuit. Is this the end of the road for Converse, or will they take the partial win and move on to new enforcement efforts? While questions remain about the next steps, what is certain is that the original Chuck Taylor will continue to be one of Converse’s best-selling shoes.