Archives For January 2015

Sneaker manufacturers are slugging it out in court. At issue is whether a company can claim the exclusive right to produce sneakers with distinctive designs. First, Converse Shoes sued 31 companies for creating knockoffs of its All Star sneakers. Then New Balance jumped into the ring and sued Converse, claiming that the trademark was invalid.

Converse Claims Trademark Infringement

In October 2014, Converse sued 31 companies in 22 separate lawsuits, claiming they infringed Converse’s trademarks by copying core elements of the design of its famous Chuck Taylor All Star basketball sneakers. Among the companies sued were giants such as Walmart and Kmart. Converse also filed a complaint with the International Trade Commission, hoping to prevent knockoffs made overseas from entering the country.

The popular footwear, known to generations of teenagers as “Chucks,” has a distinctive shape and black-and-white design with a white rubber toe cap. Although originally designed for playing basketball, they have become fashion statements that convey an aura of coolness and have appeared in iconic movies such as “Grease” and “Rocky.” Chucks have been made since the 1920s, saw an explosion of popularity in the 1950s and 60s, and had a new surge of popularity after Nike bought Converse in 2003 and ramped up efforts to promote and distribute the All Stars.

The more popular the sneakers became, the more their design was imitated. The result was Converse’s vigorous attempt to protect its brand.

New Balance Fights Back

New Balance makes a sneaker under its PF Flyers brand that looks similar to the Converse All Star. Even though New Balance was not one of the 31 companies that Converse had sued, New Balance decided to take proactive action to try to prevent Converse from adding it in the future to the list of companies in its lawsuits or in its Trade Commission claim.

In late December, New Balance sued Converse, claiming that Converse’s trademark should be canceled. New Balance’s rationale was that Converse’s trademark describes features that are common to many shoes, and that the All Stars and the PF Flyers are different enough that consumers wouldn’t be confused.

Walmart and Kmart Fight Back Too

Walmart, Kmart, Sketchers, Ralph Lauren Corp, and many of the other companies that Converse sued have been hiring Intellectual Property lawyers and gearing up for the suit, which is expected to become a major news story when it gets underway later this year.

When Can Fashion Design Elements Be Legally Protected?

These cases raise questions about what trademarks mean in the world of fashion and whether the manufacturers of fashion products can claim exclusive rights to elements of their designs. Converse, according to some experts, may have an uphill battle.

Showing that a design element is popular is not enough to claim infringement. Even showing that the design is different and distinctive is not enough. Instead, in order for similar designs to be infringing, consumers must associate the design element with its original manufacturer. In addition, manufacturers are not allowed to legally protect design elements that are functional.

These two requirements will make it difficult for Converse to prevail, observers say. Many people will be avidly watching the lawsuits to see how they turn out.

Don’t Miss Out

Find this interesting? We do too. Subscribe to Mighty Updates, our quarterly email newsletter to stay up to date on trademark law.

Image: Thinkstock/kosobu
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

If you own a small business or are planning on establishing one, you need to pay close attention to protecting your chosen business name and associated brand while at the same time making sure you do not infringe on established trademarks of other businesses. Of course, many small business owners don’t think about trademark law until it is too late.

Thus, in this weeks post we want to provide a brief overview of what you need to know!

The Basics

Trademarks are a form of intellectual property that can consist of one word, a phrase, photos, logos sounds or other identifying marks that distinguish one particular brand from another similar one.

For example, everyone associates big yellow arches with the famous hamburger seller, McDonald’s. A man named Donald could not open a business using yellow arches to sell sandwiches without infringing on McDonald’s trademark, the big yellow arches.

There a few steps you should take that will both protect your own trademark while at the same time keep you from infringing the trademark of another business.

  1. Choose a business name. But, before opening the doors for business, you should do an extensive trademark search to make sure that the chosen name is not already being used by another similar business. There are companies that provide this service that will search all available state and federal data bases. Read more about trademark searches in our post, How to Perform a Trademark Search.
  2. If a similar business is found using the same or similar chosen name, you might consider choosing another name to avoid a dispute.
  3. If no conflicts are discovered, register the chosen name as a trademark with the USPTO (more on that here). You should also seriously consider hiring a knowledgeable trademark attorney for this process. It will avoid snafus that may be costly and time-consuming.

That is how you can go about choosing and protecting your name. Trademark litigation is a whole other beast!

Trademark Infringement

Always keep in mind that if you use another company’s trademark in commerce in such a way as to cause consumer confusion, you can be sued for trademark infringement. Defending such a suit can be costly and you should always strive to avoid this unfortunate situation by conducting a trademark search as outlined above.

On the other side of the coin, you should make sure to police your trademark whenever possible. This is because if you allow other businesses to use your trademark without objection, you may lose your right to sue. If you come across an infringer, or if you encounter any consumer confusion, you should immediately speak to an attorney to learn more about your rights.

Help on the Internet

Luckily, in today’s connected world, there are many online resources you can use to protect your rights and help you avoid infringing the rights of others.

One resource is MightyMarks®, our virtual trademark application process. If you have questions about protecting your mark, we recommend you reach out to us to discuss how we can help you!

Image: Thinkstock/StudioM1
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.