WASHINGTON — New Balance Athletic Shoe Inc., in a preemptive strike, has filed a complaint against Converse Inc. in federal court, asking the court to declare that it has not infringed on certain Converse Inc.’s sneaker designs that are at the heart of several lawsuits Converse has filed against other major footwear brands and retailers.
New Balance filed a complaint for declaratory judgement in U.S. District Court in the District of Massachusetts on Dec. 23. The complaint was made public late Wednesday by the U.S. International Trade Commission in seeking a declaration of non-infringement from the court and alleging that Converse has threatened to add New Balance to a broad trademark infringement case it has filed against 32 footwear manufacturers and retailers, including Wal-Mart Inc., Kmart Corp., H&M, Skechers, Fila, Iconix Brand Group, Ralph Lauren Corp., Aldo Group and Tory Burch.
Converse has filed lawsuits in federal court against a group of companies alleging that they infringed on its Chuck Taylor All Star sneaker design and the trademarks related to it. Separately, Converse has requested the ITC begin an investigation into the allegedly illegal importation or sale of products bearing certain of its trademarks.
New Balance said in its federal complaint that it has not been named in Converse’s ITC complaint or in a federal lawsuit by Converse. But the footwear company claimed it had a meeting with Converse in November, asking for clarification on the infringement claims against other competitors and proposed a coexistence agreement with Converse that was ultimately rejected.
In addition, New Balance alleged that Converse “expressly threatened” to amend its ITC complaint and add New Balance to the complaint.
New Balance owns PF Flyers, a well-known athletic footwear brand comprised of a canvas upper, toe bumper, toe cap and striped midsole that are similar design elements to those of Converse’s Chuck Taylor All Star brand of sneakers at the heart of the trademark dispute.
“This case concerns Converse’s recent aggressive efforts to protect its alleged rights in a product configuration trademark purportedly comprised of the combination of a toe bumper, toe cap and striped midsole on athletic footwear,” New Balance said in the complaint, a copy of which was attached as an exhibit in the ITC case. “A fair reading of the ITC complaint…reveals that Converse asserts trademark rights that, if upheld by the Commission, may improperly affect PF Flyers’ ability to compete with Converse. Equally as troubling, Converse’s ITC complaint seeks a general exclusion order that purports to target the named respondents, but is broadly written so as to also potentially exclude long-time legitimate competitors, such as PF Flyers.”
New Balance is also asking the court to cancel Converse’s trademark registration related to the designs in the infringement case.