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Friday, 17 October 2014

Converse sues for trade mark infringement of iconic Chuck Taylor All Star

It is commonly known that only successful products are copied, and Converse shoes are no exception. The Chuck Taylor All Star sneakers, introduced almost a century ago (in 1917) are Converse’s signature shoes and are still very popular.

Deciding that they had had enough of their product being copied, Converse (now owned by Nike) have filed separate lawsuits against 31 retailers and rival shoe designers, whom they accuse of infringing the trade mark for the design of their signature shoes. The lawsuits were filed in the US District Court for the Eastern District of New York. Converse have also requested the International Trade Commission to look into the matter.

The defendants whom Converse said have copied their Chuck Taylor's shoes, range from the supermarket Walmart to other shoe companies such as Skechers. Converse claim that the products of these companies take away from the sales of Converse shoes.

Converse have asked for damages and injunctions against the companies, which would stop them from selling the similar shoes. If the International Trade Commission launches an investigation into the matter and rules in favour of Converse, the companies may also face an exclusion order which would prevent them from importing products into the USA.

Converse said that they owned trade mark registrations for the “distinctive midsole design made up of a toe bumper and a toe cap, plus an upper strike and/or a lower stripe” and explained that this is now a design which has become synonymous with Converse. Since the launch of this design, Converse have sold one billion pairs of these shoes. They also say that they had spent hundreds of millions of dollars to advertise and promote shoes bearing the trademark.

Converse chief executive Jim Calhoun said that his company welcomed fair competition but this did not give other companies the right to copy the “Chuck’s trademarked look”. The defendants in the lawsuits had been selling ‘confusingly similar’ imitations, in similar channels of trade, which resulted in a likely confusion. Converse also said that they had served 180 cease-and-desist letters within the past six years to retailers who were selling look-alike trainers.

In order to win their lawsuits, Converse would have to prove that the public may be confused as to the source of the similar products and believe that they were manufactured by Converse, when in fact they were not. The public would therefore be buying the look-alike products without realising that they are not from Converse.

Converse has a lot at stake. Not only it is potentially losing sales, but it also risks losing its trade mark if similar products become widespread without opposition.

For more information, click here and here.

8 comments:

Simon Newman (University of Westminster) said...

This sounds like a clear attempt to use US (unregistered?) trade mark law - it seems it would be a passing off claim in the UK - as a permanent Design Right. It reminds me of Philips vs Remington, with the attempt to claim monopoly over three-headed shavers. Hopefully the court will have no truck with this.

Incidentally my understanding is that the US has no federal Design Right? Perhaps something along the EU RDR model would help US courts to understand the difference between TM and design, and set reasonable limits to protection for this sort of thing - design that was once innovative but that should have long lapsed into the public domain.

Anonymous said...

Would it be too much to ask to verify whether or not the storyline involves and actual registered trademark? I can see mainstream media glossing over this point, but this venue is hardly mainstream.

Anonymous said...

@Anon 14:00: I am not active in the TM field but the sentence "In order to win their lawsuits, Converse would have to prove that the public may be confused as to the source of the similar products and believe that they were manufactured by Converse, when in fact they were not" indicates to me that we are talking unregistered TM law here.

Anonymous said...

Anonymous @ 08:12,

No it does not - as that element is a part of what must be proven in both registered and unregistered cases.

Further - and more to my point - the presence of a registered mark (and the mark number) would provide a very specific context and prosecution history that would add depth to the story. As well as would the affirmative absence of such (without making the reader guess as to that presence or absence).

Anonymous said...

Yes, I too think the story would benefit from identifying what rights (eg registered or unregistered) were involved.

Simon - I'm not an expert, but the US has a Design Patent which I believe is, despite the name, roughly equivalent to a Registered Design.

Jeremy said...

From the fact that the many news items on this action contain more or less the same information and often in the same order, I would guess that the source was the same media release from Converse.

The website of the District Court for the Eastern District of New York is here: https://ecf.nyed.uscourts.gov/cgi-bin/ShowIndex.pl If any reader has access to its records, he or she can verify which trade mark(s) if any provide the basis for this action.

Anonymous said...

This is a 2013 complaint:
http://www.universalhub.com/files/converse-complaint.pdf
I would be suprised if the recent filings differ substantially.

EdT

Anonymous said...

Converse is asserting both unregistered trademark rights as well as different US trademark registrations it obtained recently for its outsole (i.e. bottom of the shoe) and mid sole design (trade dress).

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