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Toe Caps, Stripes, and Bumpers: Federal Circuit Revives Converse Sneaker Dispute

November 07, 2018
Post by Nicholas J. Krob

While Christian Louboutin has shown that trademark rights may extend to colors used on a shoe, can the design of a shoe itself also be protected? As the Federal Circuit made clear last week, the answer is yes.

For years, sneaker giant Converse, Inc. has sought to protect its brand by claiming trademark rights in its famous Chuck Taylor sneaker. To this end, Converse filed a federal trademark application on the sneaker’s design in 2012, which issued the following year as U.S. Trademark Reg. No. 4,398,753, that covers “the design of the two stripes on the mid-sole of the shoe, the design of the toe cap, the design of the multi-layered toe bumper featuring diamonds and line patterns, and the relative position of these elements to each other”. Shortly thereafter, the company filed 22 separate trademark infringement, dilution, and unfair competition lawsuits against various brands selling shoes alleged to infringe upon the Chuck Taylor’s protected design. One such lawsuit was filed with the International Trade Commission against brands such as Sketchers and New Balance.

In 2016, the ITC ruled that Converse did not have trademark rights in its Chuck Taylor sneaker design despite its federal registration. The basis for this determination was that the mark had not acquired “secondary meaning”.

Under U.S. law, secondary meaning is required to show a mark is distinctive of a product’s source when the mark, as here, constitutes the design of the product. Secondary meaning occurs when, in the minds of the public, the primary significance of a mark is to identify the source of the product rather than the product itself.

Last Tuesday, the Federal Circuit vacated the ITC’s ruling, stating that, among other errors, the ITC had erred in applying the wrong standard with regards to its invalidity determination. Notably, the Federal Circuit explained that the length, degree, and exclusivity of use of a mark are “substantially interrelated” and, unlike the ITC’s analysis, “should be evaluated together” when determining whether a mark has acquired secondary meaning. Based on such errors, the Federal Circuit remanded the case back to the ITC.

With the Federal Circuit’s ruling, it is clear that, upon meeting the requisite thresholds, something as broad as the design of a $50 shoe can be protected under U.S. trademark laws. Whether Converse will receive such protection for its Chuck Taylors, however, remains to be seen.

Nicholas Krob is an Intellectual Property Attorney at McKee, Voorhees & Sease, PLC. For additional information please visit www.ipmvs.com or contact Nick directly via email at nicholas.krob@ipmvs.com.


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The attorneys of McKee, Voorhees & Sease, P.L.C. designed this blog as an informational and educational resource about intellectual property law for our clients, other attorneys, and the public as a whole. Our goal is to provide cutting-edge information about recent developments in intellectual property law, including relevant case law updates, proposed legislation, and intellectual property law in the news.

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