The International Trade Commission has ruled in favor of New Balance in its legal battle with Converse over trademark rights regarding footwear.
In the fall of 2014, Converse asserted trademark rights regarding the toe cap, toe bumper and midsole stripe design accents in its Chuck Taylor All Star sneakers by filing a lawsuit with the ITC requesting a general exclusion order. If approved, that would have prohibited other companies from importing any shoe with those design elements.
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 likeness of its trademarks. Converse’s broad trademark infringement case was 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.
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In January 2015, New Balance claimed it had a meeting with Converse asking for clarification on the infringement claims against other competitors and proposed a coexistence agreement with Converse that was ultimately rejected.
New Balance Athletics Inc., which owns the PF Flyers brand of footwear, intervened in the case to try to protect its ability to continue to sell PF Flyers’ footwear using toe caps, toe bumpers and stripes as it has done for decades. The recent ITC decision deemed Converse’s Chuck Taylor midsole trademark invalid, noting that numerous companies including PF Flyers have used similar design for decades. That ruling protects PF Flyers’ right to continue to import and sell its classic footwear in the U.S.
In a statement released by New Balance, Paul Gauron, executive vice president and general counsel, said, “While New Balance respects competitors’ valid intellectual property rights and enforces its own trademarks in footwear, no single company owns the exclusive right to make classic, athletic footwear with the combination of a toe cap, toe bumper and midsole stripes as Converse claimed in this case.”
Executives at New Balance did not respond to requests for comment Friday.