Converse All Stars on display

Christian Louboutin, Tiffany & Co. and the Fashion Law Institute at Fordham University have all weighed in on Converse Inc.’s ongoing fight for broader protection of its Chuck Taylor All Star shoe design.

In an amicus brief filed with the U.S. Appeals Court for the Federal District, the brands and the institute did not come down on either the side of the dispute between Converse and the International Trade Commission.

Converse sued New Balance and others in 2014 seeking to defend the design of its Chuck Taylor sneakers. The ITC in July refused to extend trademark rights for style’s toe cap, toe bumper and midsole stripe design accents.

In their filing with the court, Louboutin, Tiffany and the Fashion Law Institute took issue with the appellate court’s characterization of “exclusivity of use,” or a party’s ability to use a trademark without exception — a factor used in legal analysis when a trademark is claimed to hold secondary meaning and be deserving of trade dress protection. In the case of Converse, the company claims its All Star design and related trademarks have secondary meaning because the classic shoe is so closely associated with the brand.

The brief said the ITC “inaccurately” suggested in its underlying decision that without a complete exclusivity of use, secondary meaning cannot be established.

“This view overemphasizes the weight to be given to the absence of substantial exclusivity when assessing secondary meaning,” the parties argued in their brief. “Contrary to the commission’s approach, secondary meaning can and does exist in the absence of exclusivity of use. Indeed, exclusivity of use is not a prerequisite to obtaining and holding a valid trademark, as it might be in other areas of intellectual property law.”

Instead, the amici said exclusivity should be characterized as “just one of many indirect tools that can help answer the secondary meaning question — whether the buying public associates a mark with a single source.”

The amici went on to note that neither the U.S. Patent and Trademark Office, nor the Lanham Act require exclusivity for the establishment of secondary use and said the ITC’s “overemphasis” on the absence of exclusivity in its analysis of Converse’s arguments threatens to reduce the effectiveness of trade dress protection.

The appellate court is reviewing Converse’s appeal.

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