ITC Judge Finds for Converse in Massive Trademark Case
November 19, 2015 TFL
A U.S. International Trade Commission (“ITC”) judge sided with Converse Inc. this week in a closely-watched case, in which Converse claims that roughly 30 other footwear-producing brands, including Ralph Lauren, H&M, Zulily, Aldo and Tory Burch, violated its trademark rights in the Chuck Taylor sneaker by selling copycat shoes. In a notice filed yesterday, Administrative Law Judge Charles Bullock held the importation of the lookalike shoes into the U.S. violated U.S. trade laws, as the products infringed three of Converse's registered trademarks in connection with its Chuck Taylor shoe. Judge Bullock also issued a recommendation of a general exclusion order directing U.S. Customs and Border Protection to prevent all of the infringing footwear products from entering the U.S., as well as cease-and-desist orders against the defendants that were found to infringe.
According to a statement from Converse: “The Chief Judge of the International Trade Commission validated Converse's intellectual property rights in the iconic Chuck Taylor All Star and supported our right to enforcement. The original Chuck Taylor All Star and its unmistakable look have been a hallmark of the Converse brand for decades.”
Converse, which is owned by Nike Inc., filed its trademark infringement complaint with the ITC in October, alleging that the 31 defendants infringed a number of its Chuck Taylor All Star trademarks. The ITC initiated an investigation against the companies in November. The Massachusetts-based sneaker company also filed 22 separate lawsuits in New York federal court based on trademark infringement and dilution, false designation of origin/unfair competition, and common law trademark infringement and unfair competition, among other claims.
On the heels of its out-of-court settlement with Ralph Lauren in January, Converse settled a several more of the 22 lawsuits it filed this past October against the aforementioned brands. The Massachusetts-based sneaker company moved to voluntarily dismiss its lawsuits against H&M, Tory Burch, and Zulily, signaling the parties' ability to come to an agreement regarding the defendants' production of copycat shoes in February.
One party that is not willing to settle the matter quietly out of court? Wal-Mart. In fact, the discount retail behemoth responded to the lawsuit Converse filed by accusing Converse of trying to “extort monetary settlements” from a large group of the brands. Instead of quietly settling and paying what certainly amounts to a nominal sum for the billionaire company, Wal-Mart has vowed to "vigorously fight" the case.