In a joint opening brief filed Monday at the Federal Circuit, the companies argued Converse has no right to claim trade dress protection of the rubber toe cap, toe bumper and midsole stripes used in various styles of its popular Chuck Taylor sneaker, because other companies have “for many decades” sold shoes with these same elements.
Although the Converse Chuck Taylor as we know it today has been sold since the early Twenties after its predecessor was rolled out in 1917, Wal-Mart Stores Inc., Skechers USA Inc. and New Balance Athletics Inc. pointed out that evidence culled during an underlying International Trade Commission investigation showed “hundreds of manufacturers advertised and sold shoes bearing the [asserted designs]” since before 1940.
The companies said the ITC was right to deny Converse trademark rights on the design elements, namely because Converse did not begin asserting rights to the designs until about a decade ago and internal documents have even shown Converse “bemoaning” its lack of legal protection for the shoes.
Converse did not apply for the trademark at issue until August of 2012, according to government records. The underlying lawsuit started off with a 2014 action against New Balance and more than two-dozen other companies making sneakers.
The companies also argued that the design elements at issue simply lack secondary meaning — when a design element immediately signals to a consumer the source of a product — given they are clearly not the only company to use such design elements.
“Long-standing use by a company like Converse is not evidence of secondary meaning unless such use is ‘substantially exclusive,’” the companies said. “Here, the ‘abundant’ evidence relied upon by the commission shows that Converse’s use was anything but substantially exclusive; instead, Converse has always competed with shoes from other sources bearing the design that Converse now attempts to claim as its own.”
Wal-Mart, Skechers and New Balance went on to claim that the ITC reasoning “no one company could plausibly claim the design as an indicator of source” is basically inarguable, since so many third-parties have used it over the years.
In its own brief earlier this month, the ITC supported its findings, noting that Converse has “disputed little” evidence against its lack of exclusivity and pointing to a number of prior appellate rulings also supporting its decision.
A representative of Converse could not be reached for comment.
The appeal has garnered some attention from various corners of the fashion and retail industry, and in March Christian Louboutin and Tiffany & Co., which have had their own trademark battles, along with the Fashion Law Institute at Fordham University formally weighed in on the case.
While the parties didn’t come down in support of either side in the Converse fight, they did take issue with a perceived suggestion by the ITC that without complete exclusivity of use, secondary meaning cannot be established, highlighting exclusivity is not a “prerequisite” to getting a trademark.
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