New Balance Claims the Converse of Converse’s Claim

World Intellectual Property Review reports that shoe maker New Balance has sued rival shoe maker Converse in federal court in Massachusetts, seeking a declaratory judgment that its PF FLYERS athletic shoe does not infringe Converse’s trademark rights in its CHUCK TAYLOR ALL STARS athletic shoe.  Converse made headlines last October when it filed federal trademark infringement lawsuits and a U.S. International Trade Commission (ITC) action against thirty-one different retailers, including Walmart, Kmart, and Sketchers, all of whom sold athletic shoes that arguably bear similarities to Converse’s “Chuck Taylor” shoe (see an earlier post on the subject here).  The Chuck Taylor shoe is protected by numerous federal trademark registrations covering various aspects of the shoe’s appearance, including Reg. No. 4398753, which “consists of the design of 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.”

New Balance, interestingly, was not named as a party in any of Converse’s enforcement actions.  However, the company states in its Complaint that “[a] fair reading of the ITC complaint… reveals that Converse asserts trademark rights that, if upheld by the Commission, may improperly affect PF Flyers’ ability to compete with Converse.”  The Complaint further alleges that “Converse’s ITC complaint seeks a ‘general exclusion order’ that purports to target the named respondents, but is broadly written so as to also potentially exclude long-time legitimate competitors, such as PF Flyers.”  New Balance also alleges that the existence of numerous third parties selling similar shoes incorporating the claimed features of the Chuck Taylor shoe obviates any argument by Converse that it has an exclusive right to those features, and/or that a likelihood of consumer confusion exists, and/or that the features serve as an source indicator for the shoes.  New Balance therefore seeks a declaratory judgment that (1) its “use of a toe bumper, toe cap, and striped midsole in connection with athletic footwear” is noninfringing; (2) its use of the claimed features precludes “any cognizable consumer confusion”; and (3) the claimed features are not protectable under the Lanham Act.  The Complaint further seeks an order cancelling the 4398753 registration.  Read the full article here, and the New Balance Complaint here.

 By Brooke Fishwick [CC BY-SA 3.0 (http://creativecommons.org/licenses/by-sa/3.0) or GFDL (http://www.gnu.org/copyleft/fdl.html)], via Wikimedia Commons.

By Brooke Fishwick [CC BY-SA 3.0 (http://creativecommons.org/licenses/by-sa/3.0) or GFDL (http://www.gnu.org/copyleft/fdl.html)], via Wikimedia Commons.