Co-author Peter Dang, recent graduate of the University of Washington School of Law and admitted member of the Washington State bar.
Imitation may be the sincerest form of flattery, but try telling that to Converse. Last month, Converse filed multiple lawsuits in the U.S. District Court for the Eastern District of New York against 31 alleged infringers including Sketchers, H&M and others, for importing and selling knockoffs of Converse’s iconic shoes, the Chuck Taylor. Converse claimed that such alleged infringers infringed the Chuck Taylor’s distinctive shoe designs (aka trade dress) (15 U.S.C. § 1114), diluted such trade dress’ distinctiveness (15 U.S.C. § 1125(c)), and used such trade dress in a manner that constituted unfair competition (15 U.S.C. § 1125(a)). The trade dress at issue in both cases consists of Chuck Taylor’s federally registered “midsole design” and “outsole design” (collectively, the “Designs”). The midsole design (Reg. No. 4,398,753 – see image above) refers specifically to the Chuck Taylor’s “toe bumper” and “toe cap,” while the outsole design (Reg. No. 1,588,960) refers to the distinct diamond pattern on the sole of the shoe.
Simultaneously to filing its federal lawsuits, Converse filed a parallel complaint at the International Trade Commission (ITC) against the same alleged infringers for unfair trade practices (19 U.S.C. §1337 et seq.) related to importing shoes that infringed the Designs.
So why are these cases important? Beyond the large amount of potential financial recovery at stake, the outcome of these proceedings will have strong implications for cross-border trademark protection. Converse’s victory in its federal lawsuits may provide greater means for U.S. and foreign retail product producers to protect their products’ designs from unauthorized use in the U.S. by potentially expanding U.S. legal protections afforded to clothing and footwear trade dress. Further, an ITC ruling in Converse’s favor provides Converse the means to not only prevent the infringement of their trade dress, it also helps to stem the cross-border flow of shoes infringing their Designs.
Commentators have reported that Converse faces challenges in its actions because the Designs’ elements may be considered functional, and thus not protectable. Under U.S. trademark law, only distinctive non-functional elements of trade dress are protectable. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 775 (1992). Since the Designs’ rubber toe bumper and cap, and outside design are arguably used to prevent wear and provide foot protection, they may be considered functional elements of the Chuck Taylor, and thus unprotectable.
In contrast, others believe that footwear trade dress precedent may give Converse the legal basis it needs to succeed in such actions through the Designs’ potential secondary meaning. In Christian Louboutin, S.A. v. Yves Saint Laurent Am. Holding, Inc., 2012 WL 3832285 (2nd Cir. 2012), the Court found that Louboutin’s iconic red sole of its luxury women’s shoe to be distinctive despite being a element of the shoe’s sole due to secondary meaning (aka acquired distinctiveness) that the sole had acquired amongst the general public, thereby granting Louboutin trade dress protection to its shoe’s red sole. As the Chuck Taylor shoes have been widely available in U.S. commerce for decades, Converse may be able to establish that the Designs acquired secondary meaning amongst the U.S. public, and are thus protectable despite their apparent functionality.
Impact of the ITC Action
Although Converse’s victories in its federal court actions would likely result in substantial financial recovery for Converse, a favorable ITC decision would arguably provide Converse greater cross-border benefits. The ITC provides rights holders of U.S. patent, trademark and copyright rights the means to petition the U.S. government under Section 337 of the 1930 Tariff Act to conduct an investigation of unfair trade practices, including the importation of goods infringing such U.S. IP rights. If such infringing importation is found, the ITC may issue a ban on such infringing imports. In Converse’s case, an ITC issued ban would prevent the alleged infringers’ importation of footwear utilizing the Designs into the U.S., and potentially deter transshipments of such footwear to other markets from the U.S. As such a ITC decision impacts the importation and exportation of shoes infringing the Designs, it arguably has more cross-border benefits as it could effectively provide Converse trademark protection across multiple markets through one legal action.
What’s The Takeaway?
If successful in both its federal and ITC actions, Converse may obtain substantial financial recovery and injunctive relief to prevent imitators from selling their shoe designs in the U.S. and potentially other markets. More broadly, a favorable ITC ruling for Converse would provide Converse the tools to protect its Designs and control the flow of goods infringing such Designs across markets, a strategy that commentators have reported is overlooked, but has the potential to provide enhanced cross-border trademark protections.