WASHINGTON — Converse Inc. is claiming victory in an International Trade Commission case it filed against 31 retailers and manufacturers after an administrative law judge issued an initial decision made public on Wednesday that found violations of certain Converse trademarks.
Chief Administrative Law Judge Charles E. Bullock issued a notice regarding an initial determination, stating there has been a violation of section 337 of the Tariff Act of 1930 in the importation into the U.S. and sale of certain Converse trademark, relating to the company’s iconic Chuck Taylor All Star sneakers.
Bullock did not outline the details in the notice or name the companies that violated the Converse trademarks. In a second notice posted on the ITC Web site, the court said it is soliciting public comments in the case relating to the judge’s recommendation of a general exclusion order that directs U.S. Customs and Border Protection to stop all of the infringing footwear products from entering the U.S., as well as cease-and-desist orders against the defendants that were found to infringe.
“The Chief Judge of the International Trade Commission validated Converse’s intellectual property rights in the iconic Chuck Taylor All Star and supported our right to enforcement,” Converse said. “The original Chuck Taylor All Star and its unmistakable look have been a hallmark of the Converse brand for decades.”
A Converse spokeswoman said the company expects the full public summary to be released within about two weeks.
Converse, owned by Nike Inc., filed its trademark infringement complaint with the ITC against 31 companies in October, alleging they infringed on some of the brand’s trademarks used primarily in its Chuck Taylor All Star. The ITC initiated an investigation against the companies in November. Converse also filed lawsuits in federal court against the companies.
Converse claimed in the complaint that all of the defendants 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 introduced in 1917 and renamed “Chuck Taylor” after a Converse salesman and basketball player. A portion of the defendants are accused of illegally infringing on Converse’s outsole design, composed of a distinct diamond pattern.
Several companies named in the complaint, including Tory Burch, Aldo Group, Fila USA, Iconix Brand Group, Ralph Lauren Corp., Hennes & Mauritz and Zulily Inc. have entered into settlement agreements with Converse since the complaint was filed and have agreed to stop importing the allegedly infringing shoes.
But Wal-Mart Stores Inc., Skechers U.S. and Highline United LLC refused to settle and challenged Converse’s trademark assertion at a five-day hearing in early August.
On the first day of the hearing in August, Converse argued that it had a valid trademark and was being injured by Wal-Mart, Skechers and the other remaining defendants. Jim Calhoun, president and chief executive officer of Converse, also testified at the hearing.
“The common denominator is the respondents’ unauthorized use of Converse’s midsole trademark,” said James Adduci, counsel for Converse, at the hearing, a previously reported. “This is the nexus between unfair acts in this investigation and damage caused to the Converse brand by importation and sale in the United States of the accused shoes. If consumers conclude they can enjoy Converse’s ‘cool factor’ by infringing often with lower-priced shoes, this will cause real damage to the brand itself. The evidence will show this threat to Converse’s brand equity is real, immediate and imminent.
“Taken together, we will show that Converse has a domestic industry that is threatened by substantial injury from U.S. sales of the accused sneakers,” he added. “Not only has Converse lost sales and profits associated with those sales, but its brand has suffered due to the unwanted association that U.S. consumers are making between Converse brand and that of the infringers.”
The company said in October, revealing the ITC case and lawsuits, that the knockoffs of “Chucks” “used to be a rarity” but became widespread beginning in 2008. The company said it served more than 180 cease-and-desist letters asserting its rights in the Converse Midsole trademark and the Converse Outsole trademark.
“The proliferation of these knockoffs causes confusion among consumers, as well as economic harm and damage to both the Chuck Taylor business and Converse brand,” the company said at the time. “The ITC and Federal District Court cases filed today are a necessary step toward bringing a stop to this infringing activity.”