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28 June 2016Trademarks

Converse handed mixed ruling in Chuck Taylor ITC case

Shoe brand Converse has been handed a mixed ruling at the US International Trade Commission (ITC) as the agency said Wal-Mart, Skechers and New Balance did not infringe a trademarked shoe design, though two Converse trademarks were found to be valid.

In a decision handed down on Thursday, June 23, the ITC invalidated one Converse-owned trademark but also issued a general exclusion order barring shoes from entering the US that infringed two other Converse-owned marks which were found to be valid.

The dispute dates back to 2014 when Converse, which has been owned by sportswear multinational Nike since 2003, sued 31 retailers and rival shoe designers in separate lawsuits filed at the ITC and the US District Court for the Eastern District of New York.

The cases centre on the Chuck Taylor line of shoes.

Converse said it owns trademarks and trade dress for the shoe’s midsole and outsole. It added that the defendants had been selling “confusingly similar” imitations in similar channels of trade, resulting in a likely confusion.

In its ruling the ITC said that Converse owns two valid trademarks covering the outsole layout of the trainer but that certain parts of the shoe’s look—including the midsole—were invalid and not infringed by the three shoemakers.

The parties were not accused of infringing the outsole mark.

The remaining 28 companies that Converse targeted have reached settlements with the shoe company.

Michael Greenberg, president of Skechers, said: “Countless companies, including Skechers, have used the same midsole design in canvas court-style sneakers for decades.

“We are pleased that the ITC invalidated Converse’s claimed trademarks in the Chuck Taylor midsole design.”

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