Few, if any, shoe brands are more iconic than the Converse Chuck Taylor All Star High Top sneaker. Named after a basketball player and taken to market in 1932, Chucks have been the shoe of choice ever since, including by virtue of a gracefully pivot from athletic gear to fashion statement in the 1970s.
In addition to registrations for the mark CONVERSE and the iconic star logo placed inside the high top’s ankle, Chuck Taylor sneakers are protected by a registration covering distinctive features such as dual stripes on the shoe’s midsole and a multilayered toe cap with its pattern blending diamonds and lines. Converse also claims “common law” trademark rights based more broadly on use of its marks on the sneakers.
Creating a distinctive product
To be valid, a trademark must be distinctive and indicate the source of the product. It can have inherent, intrinsic distinctiveness or, if it is not inherently distinctive, it must have acquired “secondary meaning,” defined (in respect of a trademark based on product appearance or configuration, also called “trade dress”) as an acquired consumer association of the item’s distinctive look or design with a particular product source.
A registered trademark enjoys a presumption of distinctiveness, but claims of common law rights in a distinctive trademark must be proven by the claimant.
According to our friends at Trademarkology, “It usually takes a lot of time, along with exclusive use of the particular design and strong sales of the product, for the public to identify a product looking a certain way as coming from a particular source. Adding to the challenge is the fact that competitors are likely to produce knock-offs of a successful product – which they are normally entitled to do.” Such knock-offs can dilute the distinctiveness a brand attempts to build around the features or design of its product, making it harder for the public to identify the design with a specific source. As could be the case in the present controversy, the product could becomea generic canvas sneaker rather than a trade dress-protected Chuck Taylor.
In sum, marks without inherent distinctiveness, that instead rely on acquired distinctiveness for protection, can be significantly more difficult to enforce.
Converse fights back
In the present dispute, Converse went after imitators to prevent the import of similar sneakers it alleged infringed on its trademark rights. It asked the International Trade Commission (ITC) to keep those competing products out of the U.S. market. Some of the respondents refused, arguing that most people cannot recognize one canvas sneaker from another based on the design features Converse claims are distinctive to its shoes, and that the Converse design therefore has no secondary meaning. The defendants backed this up with a survey and won the ITC case in 2016.
The ITC held that because there was no secondary meaning, the registered and common law trademarks were invalid, so there could not be infringement. (It also said that if the trademarks were not invalid, the competing products would have been infringing.)
However, Converse appealed to the U.S. Court of Appeals for the Federal Circuit. The result was remand back to the ITC for reconsideration of its ruling utilizing corrected standards, including:
· The presumption of secondary meaning extends forward from the registration date, but not back in time.
· To determine whether secondary meaning exists outside of the presumption associated with registration, evidence from the five-year period before alleged infringement is primarily relevant.
· Only the use of designs “substantially similar” to the trademarked product configuration is relevant to whether secondary meaning exists.
Court watchers will keep an eye on the outcome of this case before the ITC on remand.
Attorneys with trademark law experience can help designers, manufacturers, sellers and others in the chain of commerce to appreciate, protect and exploit trademark rights in connection with their products, whether it be before product launch or sometime thereafter.