In the Matter of: Certain Footwear Products, investigation number 337-TA-936
The ITC's decision in this matter was named by Law360 as the most significant ruling in the area of trademark law during the first half of 2016.
In a victory for a broad group of apparel companies, including Analysis Group client New Balance, the US International Trade Commission (ITC) has invalidated one of the trademarks for Converse's Chuck Taylor All Stars shoe, ruling that not all parts of the sneaker are protected by trademark.
Analysis Group Affiliate Peter Golder, Professor of Marketing at the Tuck School of Business, Dartmouth College, was retained as a marketing expert by New Balance. Supported by an Analysis Group team led by Managing Principal Aaron Yeater, Professor Golder analyzed the marketing efforts by Converse to assess whether those efforts indicate the at-issue design elements were “source identifying” as required under US trademark law. Professor Golder offered two expert reports and testified in an ITC hearing.
In an effort to protect the trademarked designs for its Chuck Taylors, Converse had sought to block importation of certain products. An exclusion order from the ITC would enable Converse to pursue broad relief against products it alleged violated its trademark designs. The scope of such a potential ruling concerned many apparel companies, including New Balance, which argued that the trademarks were too broad and would encompass both unbranded products imported from overseas as well as well-known brands with a long history of offering sneakers with similar at-issue design elements, potentially including New Balance's PF Flyers.
In its decision, the ITC held that, while Converse's trademarks for its diamond-patterned outsole were valid, the trademark that covered the midsole of the shoe is invalid. The midsole trademark, which includes many other parts of the sneaker's look – such as the rubber-toe band, toe cap, and stripes – is the mark that New Balance and other retailers were accused of infringing, and was the mark that Professor Golder was retained to evaluate.
Both sides are entitled to appeal the ITC ruling.