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.
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*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.
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