Boston-based footwear brand New Balance Athletics, Inc. announced on Thursday that it has secured a landmark victory in its legal battle with Converse over trademark rights related to the PF Flyers Brand, which New Balance acquired in 2001. The victory comes after Converse sued upwards of 30 footwear brands, including Tory Burch, H&M, Walmart, Sketchers, New Balance, and dozens of other retailers for allegedly making knock-offs of its iconic Chuck Taylor design, which dates to the 1940s and features a distinctive rubber toe cap and striped midsole. Converse, which has been owned by Nike Inc. since 2003, was awarded a trademark on the shoe in 2013.
New Balance followed up by filing suit against Converse in December 2014, asking a Massachusetts federal court to declare it isn’t infringing Converse Inc.’s trademark rights for the Chuck Taylor All Star sneaker and to boot a related trademark registration, amid Converse’s infringement litigation against other companies in courts including the U.S. International Trade Commission (“ITC”).
“Unfortunately, Converse’s overly aggressive actions unfairly put at risk legitimate and longtime users of the design combination and this lawsuit is necessary to protect the PF Flyers brand,” New Balance said in a statement after filing suit in December. “In its lawsuit New Balance seeks a declaration that it remains entitled to use the combination of design elements, which have been used on PF Flyer shoes for decades.”
New Balance Athletics, Inc., the owner of the famous PF FLYERS brand, intervened in the ITC case to protect its ability to continue to sell footwear using toe caps, toe bumpers and stripes as has been sold under the PF FLYERS brand for decades. In the public release of its full opinion this week, the ITC found Converse’s alleged Chuck Taylor midsole trademark invalid, recognizing that numerous parties, including PF Flyers, have utilized similar designs for decades. The decision confirms PF Flyers’ right to continue to import and sell its classic footwear in the United States to its loyal consumers.
”We are extremely pleased that the International Trade Commission fully supported New Balance’s position that the alleged Converse midsole trademark is invalid.” says Paul Gauron, Executive Vice President and General Counsel at New Balance. “While New Balance respects competitors’ valid intellectual property rights and enforces its own trademarks in footwear, no single company owns the exclusive right to make classic athletic footwear with the combination of a toe cap, toe bumper, and midsole stripes as Converse claimed in this case.”