The ITC and the Chuck Taylor sneakerPrint publication
In 2014, Converse filed an application with the International Trade Commission (ITC) seeking a general exclusion order in relation to its trade mark rights in features of its Chuck Taylor sneaker.
Converse has previously instituted multiple infringement proceedings against a number of manufacturers and retailers to protect its trade marks in respect of the sneaker. The rationale for an application to the ITC is that the ITC has the power to rule that a trade mark is entitled to protection and to place the trade mark on a list of goods that are excluded from entry to the United States at US border crossings, unless the use of the mark is authorised by the proprietor. Accordingly, filing a complaint with the ITC is an attractive remedy for proprietors like Converse who continuously face counterfeits imported from foreign countries.
The application to the ITC has, however, been met with mixed fortunes. In particular, the ITC ruled that the mark that protected the toe cap, toe bumper and midsole stripes lacked “secondary meaning”. In other words, the public did not associate those design features with Converse. Competitors had been using similar designs for decades. Converse continues to own a federal trade mark registration in respect of these features of the sneaker but the status of that mark is now open to question following the ITC ruling. The effect of the ruling is that it will be harder for Converse to claim exclusive rights to design elements such as the toe cap and toe bumper. Unsurprisingly, the ruling has been welcomed by retailers who have been previously sued by Converse for trade mark infringement.
The ITC ruling was not all bad news for Converse. The iconic diamond-patterned outsole on the sneaker was entitled to protection as the ITC held that this did have secondary meaning, i.e. ordinary purchasers would associate that design with Converse.
Converse has stated that it intends to appeal the decision.