Converse has been handed a partial victory in the case it filed before the U.S. International Trade Commission (“ITC”) in 2014. On Thursday, the ITC held that two of Converse’s trademarks (or better yet, trade dress protections) – those extending to the designs of the soles of its Chuck Taylor sneakers, namely those centering on the diamond-patterned outsole – are enforceable. In less favorable news, the ITC held that its midsole stripe, bumper toe and cap toe design are not valid trademark. In connection with the enforceable trademarks, the ITC has issued an exclusion order blocking any non-Converse shoes with the soles from entering and being sold in the U.S.
“While we do not agree with all of the ITC’s findings, we feel confident our rights will be vindicated on appeal,” said Brian Fogarty, senior director, global intellectual property litigation at Nike, which acquired Converse in 2003 for $305 million. “This is but one step in a long process.” Thursday’s ruling means that Converse will be able to block any shoe that infringes on its diamond outsole from entering the country.
Converse filed an array of separate lawsuits in October 2014. It sued 31 companies, including H&M, Wal-Mart, Ralph Lauren and Tory Burch, in 22 individual cases in federal court in Brooklyn, New York on trademark grounds. Separately, the company also pursued a complaint with the United States International Trade Commission, which has the power to block products that are considered to be counterfeit from entering the country.