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INTA Bulletin

October 15, 2016 Vol. 71 No. 18 Back to Bulletin Main Page

UNITED STATES: ITC Limits Protection for Chuck Taylors

A United States International Trade Commission (ITC) decision of June 23, 2016 extends protection to one aspect of Converse’s famous Chuck Taylor sneakers—the diamond-patterned outsole. The ITC is an "independent, bipartisan, quasi-judicial, federal agency of the United States government" that has the power to grant investigations into imported products that potentially infringe patents, trademarks, and other IP rights. Going forward, Converse will be able to block any company importing shoes that violate Converse’s trademark outsole, which has been a long-time part of the iconic Chuck Taylor brand. This broad exclusion order by the ITC goes beyond any one specific company, which gives Converse protection against potential future knockoffs as well.

The decision also means, however, that the remaining notable aspects of the Chuck Taylor sneakers—the rubber-toe band, toe cap, and stripes—are not afforded the same protection. Effectively, competitors can and likely will continue to design and sell similar footwear, simply without the diamond outsole.

Converse owns several federal trademark registrations for its various brands and logos, both in connection with footwear as well as in other categories of goods. The three in particular that were referenced in Converse’s complaint to the ITC were (1) U.S. Registration No. 4,398,753 (covering footwear in Class 25) (see below) for the two stripes on the midsole of the shoe, the design of the toe cap, the design of the multi-layered toe bumper featuring diamonds and line patterns, and the relative position of these elements to each other (the ’753 Trademark); (2) U.S. Registration No. 3,258,103 (covering footwear in Class 25) for the three-dimensional tread design located on the outsole of the shoe (the ’103 Trademark); and (3) U.S. Registration No. 1,588,960 (covering athletic footwear in Class 25) for the three-dimensional sole design of the shoe, including the lining and stippling elements of the sole design (the ’960 Trademark).

In a public opinion issued in early July 2016, the ITC explained that its decision was based on its conclusion that the ’753 Trademark lacks secondary meaning in the eyes of consumers. In effect, it could potentially be more challenging for Converse to claim exclusive rights to certain elements of its sneaker design, such as the toe cap and multilayered toe bumper with the diamond and line patterns. The ITC was largely persuaded by evidence that the Converse outsole design at issue had actually been used by several other shoe designers for over eight decades. Converse’s rights in its other two registrations at issue, the ’103 and ’960 Trademarks, remain affirmed by the ruling.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position. 

© 2016 International Trademark Association