Converse’s Chuck Taylors Take a Step Back with the ITC
If you ask anyone on the street, chances are high that they would recognize the iconic style of Converse’s Chuck Taylors. The shoes have been worn for decades, by people of all ages and backgrounds. They have been worn by movie stars and musicians alike, notably by Michael J. Fox in Back to the Future, and by artists in the punk rock and rock and roll communities. They have become a staple in the wardrobe of many, likely because of their distinctive look. The shoe has a cotton canvas top that comes in many colors, a white toe cap, and a rubber sole. This design hasn’t changed for years, and Converse feels very protective over it. They even have trademarks for these design elements, and that brings us to today.
Back in 2014, Converse filed lawsuits in federal court asserting their trademark rights over the toe cap, toe bumper, and midsole stripe designs on their Chuck Taylor All Star sneakers. They filed against some 32 shoe companies and distributors, including New Balance, Wal-Mart, Sketchers, and H&M. Converse claimed that these retailers had been making and selling shoes with design elements that infringed upon Converse’s trademarks, and they wanted them to stop. While a majority of these brands settled with the company, New Balance, Sketchers, and Wal-Mart did not.
At the same time, Converse asked the International Trade Commission to block its competitors from selling shoes that Converse believed infringed those same trademarks. Recently, the ITC got back to the company, and it wasn’t good news. The ITC found that the trademark for the midsole stripe is invalid, because other brands, including New Balance, have been using that design for years. Basically, the design no longer had secondary meaning – the public no longer exclusively associated the design with Converse. As such, the other brands are not barred from using the design and selling their shoes.
This is an interesting case, as it is not often that we see a brand’s trademarked design lose secondary meaning. But is also helps explain the mindset behind what sometimes appears to be overzealous litigation in the policing of trademarks. On the positive side for Converse, Chuck Taylors remain an iconic shoe, and nearly everyone has owned or considered buying a pair at some point. The shoe definitely still stands out, despite competitors like New Balance’s PF Flyers or Sketcher’s Twinkle Toes being on the market. This may be a loss for the company in terms of trademark rights, but it is doubtful that they will be hurting for business in the years to come.