Converse is taking on all comers in its battle to defend its sneaker design.
This story first appeared in the October 15, 2014 issue of WWD. Subscribe Today.
The company, owned by Nike Inc., on Tuesday filed separate suits in Federal District Court for the Eastern District of New York against 31 manufacturers and retailers alleging that they had infringed on its Chuck Taylor sneaker design. Separately, it requested the U.S. International Trade Commission begin an investigation into the allegedly illegal importation or sale of products bearing its marks.
The 31 defendants in the cases include footwear competitors such as Skechers, Fila and Aldo Group; fashion names such as Ralph Lauren, Tory Burch and Kitson, and retailers such as H&M, Kmart and Zulily. The defendants are accused of trademark infringement, false designation of origin, unfair competition, trademark dilution and unfair business practices.
The designs the defendants are accused of knocking off first appeared on Converse high-top shoes dating back to 1917 but, according to Converse’s complaint, hit the market in their current form in 1932, taking their name from a Converse salesman and basketball player two years later.
At issue are four separate features registered by the company in 2013 — a wraparound stripe on top, a mid stripe that ends where the “toe bumper” begins, a toe bumper itself and a toe cap. The company also asserts its right to the marks based on long-term use.
Converse, based in North Andover, Mass., and acquired by Nike in 2003, says it has sold about one billion pairs of shoes containing the “asserted trademark” and “over the past two fiscal years alone…has spent approximately $30 million advertising and promoting the asserted trademark in the United States.”
“Converse has served approximately 120 cease-and-desist letters at trade shows and served additional letters and filed federal district court lawsuits to protect consumer perceptions and to police the asserted trademark,” court papers said.
The company is seeking a trial by jury in the cases as well as injunctive relief, destruction of offending products and unspecified damages to cover actual harm, enhanced profits and reasonable attorney fees, among other remedies.
Converse is being represented by the law firms of Powley & Gibson PC and Banner & Witcoff Ltd. The case has been assigned to Judge Dora Irizarry.
A call to Nike seeking comment was not returned.