I had a great conversation last week where we were geeking out over sneaker law discussing Converse’s trademark battle over the look and configuration of the Chuck Taylor sneaker. It made me look up the International Trade Commission’s ruling again for a refresher. The pictures provided in the ITC’s decision are interesting to see but the final ruling actually caused Converse a lot of trouble and led to a 6 year battle over trademark rights in the Chuck Taylor sneaker design. *Just a note that this decision by the ITC below was overruled on appeal in 2018.
In 2014 Converse thought around 31 overseas manufacturers were importing infringing sneakers that looked like the Chucks into the US market and appealed to the International Trade Commission to try and ban the sneakers from coming in. Converse claimed that the two stripes on the midsole of the Chuck sneaker along with the toe cap, and the rubber toe bumper and the patterns on such were protected aspects of Converse’s registered trademarks and other rights they had in the sneaker, and that other copycat Chuck’s should be banned from being imported. The court had a different view that caused Converse trouble.
In 2016 the ITC agreed with the arguments made by the importers and noted that converse’s claim to the features of the Chuck Taylor design were not able to be protected by the trademark registration. It upheld the validity and enforceability of Converse’s outsole registrations, but invalidated Converse’s alleged trade dress in its upper designs. The ITC noted that the uppers lacked secondary meaning, or that consumers did not recognize the sneakers as only being Chuck Taylor brand sneakers. The ITC noted that it is particularly hard to trademark the configuration of a sneaker/product as a trademark. The sneaker or product configuration must acquire significance over time through use by that specific brand alone. Once it has acquired a “secondary meaning” in the marketplace and when consumers see those aspects of the sneaker they instantly attribute that to Converse Chuck Taylor sneakers, then it can garner trademark protection.
To go along with its decision the Court’s opinion included an appendix with pictures of old school basketball sneaker designs that had very similar features and look to the Chuck Taylors from the early 1900s.