Back in October, we reported the aggressive ‒ and very new ‒ efforts by Converse to protect its iconic Chuck Taylor sneaker design. Converse recently filed multiple parallel lawsuits in the International Trade Commission and the United States District Court for the Eastern District of New York, suing “basically everyone in the world” in an attempt to end the import and sale of knockoff Chucks. The lawsuits claim that Converse owns common law and federal trademark rights for the Chuck Taylor design, consisting of two black stripes on the midsole, a rubber toe cap, and the diamond-patterned “bumper” that runs around the front of the shoe.
The timing of this flurry of enforcement activity was curious, leaving us equally curious as to whether Converse has allowed its classic design ‒ part of an instantly recognizable shoe that has been a staple of athletic footwear for nearly 100 years ‒ to become generic. As it turns out, we weren’t the only ones to wonder.
On December 23, New Balance (which has not yet been named a defendant by Converse) took the offensive and filed a declaratory judgment action in the United States District Court for the District of Massachusetts, seeking not only a declaration by the court that its PF Flyer sneakers ‒ which have featured midsole stripes, a toe cap, and a toe bumper since the 1940s ‒ do not infringe the Converse trademark, but also cancellation of the Chuck Taylor design trademark registration.
In its complaint, New Balance does not use the G-word, but it alleges that the athletic shoe market has long been saturated by a variety of shoes featuring the midsole stripe, toe cap, and toe bumper combination, and that Converse has been aware of these similar sneakers for just as long. As a result, New Balance claims that “consumers (both historic and current) do not exclusively associate the combination of a toe cap, toe bumper, and striped midsole with Converse” in the absence of any other indicators of source, and that Converse’s tolerance of these shoes “for decades, constitute[s] acquiescence, estoppel, abandonment, or other equitable bar to any injunctive relief preventing use of the combination of a toe cap, toe bumper, and striped midsole by third parties.”
In sum, New Balance claims that the registration is subject to cancellation, among other reasons, because “in the minds of the public there is no exclusive association between the claimed trademark and Converse as source.”
And, while New Balance is certainly the biggest player thus far to question the way Converse has policed its design over the years, it is not alone. None of the major retailers and manufacturers Converse targeted in its litigation campaign have yet responded substantively to the Converse lawsuits (defendants named by Converse in the ITC action could, and did, seek a stay of the district court litigation while the trade case is pending). But, Law360 reports that two smaller defendants asserted in case management filings in November that the midsole stripe/toe cap/toe bumper design has become generic. One called it “ubiquitous.” The other referred to the “sea of other canvas sneakers” that feature the same design combination, which exist only as a result of Converse’s failure to police the mark. Certainly, these will not be the only defendants to advance the theory.
Converse’s potential problem is this: the first Converse All Stars were introduced in 1917, and became the Chucks we all know and love today, complete with midsole stripes, toe cap, and toe bumper, in the 1930s. The double stripe, toe cap, and patterned bumper combination is specifically protected by U.S. Trademark Registration No. 4,398,753 . . . but Converse did not apply for that registration until August, 2012. And, as New Balance illustrates in its complaint, between 1917 and 2012, many athletic footwear manufacturers produced sneakers with the midsole stripe/toe cap/toe bumper combination, including such popular brands as Keds, Wilson, AMF Voit, and Kinney.
The registration finally issued in September, 2013, and, shortly thereafter, Converse began to run advertisements in footwear industry trade publications and on social media touting the double stripe, toe cap, and toe bumper design as its registered trademark. Then, in October 2014, Converse filed its flood of lawsuits.
In its complaints, Converse argues (seemingly in anticipation of a claim that the design has become generic) that knockoff Chucks were relatively rare until around 2008; but, in the past six or so years, it has issued more than 180 cease and desist letters over similar-looking sneakers. Thus, its new, aggressive enforcement campaign.
But is it too little, too late? Putting aside the issue of whether the Converse design even deserves trademark protection in the first place (we will leave that one for another post), has Converse let its exclusive claim to one of America’s most recognizable, iconic designs slip through its fingers?