WASHINGTON — Converse Inc. has entered into settlement agreements with Hennes & Mauritz and Zulily Inc. and filed separate joint motions to terminate a broad trademark infringement case against the two retailers that is pending before the U.S. International Trade Commission, according to ITC documents.
Converse, owned by Nike Inc., filed a complaint in October against 32 retailers and manufacturers alleging they infringed on some of the brand’s trademarks used in certain shoes. The ITC initiated an investigation against the companies in November.
In addition to H&M and Zulily, Converse had previously signed a settlement agreement with Ralph Lauren. A motion on joint termination between the two companies is pending approval. Among the other companies named in the ITC complaint were Wal-Mart Stores Inc., Kmart Holding Corp., Skechers, Fila, Iconix Brand Group, Aldo Group and Tory Burch.
Converse claimed in the complaint that all of the defendants have infringed on its iconic midsole trademark design made up of a toe bumper and a toe cap, plus either an upper stripe and/or lower stripe, associated with its “All Star” high-top sneakers that were first introduced in 1917 and renamed “Chuck Taylor” after a Converse salesman and basketball player.
In a redacted version of the settlement agreement on the ITC Web site, H&M agreed to cease and desist from manufacturing, advertising, promoting, selling, distributing and supplying the infringing products throughout the world. H&M said it issued a recall of its entire remaining inventory of the infringing products, as well as advertising, promotional materials and packaging, on Jan. 19.
H&M will also make a payment to Converse, although the amount was redacted from the public version of the settlement agreement.
ITC staff recently supported a motion to stay the investigation, pending approval of the joint motion to terminate the case. Similarly, Zulily also agreed to cease and desist importing, selling or distributing the infringing shoes. It will also pay Converse an undisclosed amount.