Too Little, Too Late?

On June 23, 2016, the U.S. International Trade Commission (“ITC”) issued a decision invalidating one of Converse’s trademarks for its iconic Chuck Taylor shoes (and issuing an exclusion order prohibiting the import of any shoes that infringe certain of Converse’s other trademarks).

It is the former that is of particular interest here. Though Converse had launched suit in the ITC and federal court against dozens of companies, accusing them of trademark infringement; upon review, the ITC invalidated the company’s trademark rights in the Chuck Taylor “mid sole” – side stripes, toe cap, and rubber toe bumper.

Invalidation occurred on grounds that the midsole had not acquired secondary meaning and so consumers encountering products bearing the mark did not associate it with a single source. As one of the Defendants put it: “Countless companies, including Skechers, have used the same midsole design in canvas court-style sneakers for decades.” (Michael Greenberg, president of Skechers).

This case should pose a cautionary tale to any brand looking to preserve IP protection for its iconic product – protecting IP rights requires constant vigilance.