Test of Time

IDSA Files Amicus Brief in Converse v ITC


The Industrial Designers Society of America (IDSA) has filed an amicus brief in Converse, Inc.’s Feb. 1, 2017 federal circuit court appeal of the June 2016 International Trade Commission (ITC) decision on trademarks on the iconic Chuck Taylor All Star shoes.

The brief, filed on Feb. 1 by James Aquilina of Design IP, states, “IDSA's interests in this case are to: (i) advocate for strong trademark rights for iconic product configurations that have acquired secondary meaning as source identifiers; and (ii) foster and encourage a transparent and just legal system that affords owners of registered trademarks for famous product configurations the full extent of legal protections available to them … important to industrial designers, trademark owners and the purchasing public.”

“This decision is significant to IDSA members and the broader industrial design community,” explains IDSA Executive Director Daniel Martinage, CAE. “Without robust trade dress trademark protections, there are no other meaningful ways to protect iconic industrial designs such as those that weather the test of time and capture consumer attention for decades—where design patents have not been sought or where design patents once covered a design—but have expired.”

The initial case was filed in 2014 in US District Court by Converse against 31 major companies including Walmart and Ralph Lauren for allegedly infringing Converse’s signature Chuck Taylor shoe. IP Watchdog reports Converse accused the companies of copying the rubber “bumper” running around the front of the Chuck Taylor shoe; a “toe cap” on the top of the shoe above the bumper; and lines or stripes running around the sides of the classic kick.

Converse, acquired by Nike in 2003, pursued an additional complaint with the International Trade Commission (ITC) to prevent infringing shoes from entering the United States.

The ITC “voted to institute an investigation of certain footwear products. The products at issue… are shoes that allegedly infringe or dilute registered and common law trademarks used in connection with certain Converse shoes, such as the Chuck Taylor All Star Shoe. The complaint, as amended, alleges violations of section 337 of the Tariff Act of 1930 in the importation into the United States and sale of certain footwear products that infringe or dilute registered and common-law trademarks asserted by Converse. The Complainant requests that the ITC issue a general exclusion order, or in the alternative a limited exclusion order, and a cease-and-desist order.”

In November 2015, an administrative law judge found that Nike Converse holds two valid trademarks on the outsole layout of the Chuck Taylor shoe. In June 2016, the ITC issued a ban on any shoe that infringes upon the those two trademarks on a diamond-patterned outsole, or shoe bottom. But the ITC found invalid, a third Converse trademark on the midsole design—reversing the administrative law judge’s decision on that point. The ITC said the midsole design lacked “secondary meaning,” because consumers no longer associated the bumper toe, mid-stripe and cap toe with only the Chuck Taylor shoe. On Feb. 1, 2017 Converse appealed that ITC reversal—calling it a “dangerous” decision that would “destroy an iconic American brand and reward copiers.”

All but a few companies in the initial fight agreed to settle. But Walmart claimed, “Converse is using the suit to extort monetary settlements” and in a filing, stated that “Constripes” are “actually or aesthetically functional” and “are not subject to trademark protection.” Skechers and New Balance also stayed in the fight.