Converse, a subsidiary of Nike[1], has recently filed 22 separate lawsuits against 31 retailers and shoe designers, claiming trademark infringement for the design of their classic “Converse All Stars” shoes. Defendants include giant retailers Kmart and Wal-Mart and designers such as Sketchers, Fila and H&M.

 

The iconic sneaker company claims they own trademark registrations for the “distinctive midsole design made up of a toe bumper and a toe cap, plus an upper strike and/or a lower stripe” and explained that this is now a design which has become synonymous with Converse. Importantly, the Converse star (logo) is not in question.

When commenting on the mega-lawsuit, Jim Calhoun, the chief executive of Converse, was reported as stating “We welcome fair competition, but we do not believe companies have the right to copy the Chuck’s trademarked look.”

The issue the court must therefore determine is whether the defendants have infringed upon the aforementioned “trademarked look”, or design of Converse sneakers so as to constitute a likelihood of confusion between the sources. Under (15 USC § 1114) of the Lanham Act, the test for trademark infringement is whether the mark creates a likelihood of confusing customers as to the source of the product.

 

Infringement and Likelihood of Confusion – Ninth Circuit’s Sleekcraft Test

In order to succeed, Converse must prove that the defendant(s) sold confusingly similar products, so as to lead the public to believe their products were manufactured by Converse. In the case at hand, this means that consumers must link: a rubber toe cap, diamond pattered toe-guard and/or solid black line around the shoe as originating from Converse.

Balancing the factors enumerated in the Sleekcraft Test, used by United States Courts for the Ninth Circuit  to determine trademark infringement, it seems that the strongest argument(s) for Converse is the strength (and fame) of their mark[2], the use of the design mark in relation to the same goods (casual “street” sneakers) and the striking similarity (or “Knock-Off” as Converse has claimed) between the design marks.[3] Additionally, shoes, especially sneakers are often sold and marketed in similar channels of trade. These factors, taken together, may enable Converse to satisfy the confusion standard.

However, an important contrast the defendant(s) can point to is that while all of them integrated the rubber-toe cap in their impugned shoe designs, some of the shoe caps were different in size compared to the original Converse.[4] Additionally, not all toe-guards incorporated the diamond shaped pattern, as some used plain rubber instead.

Still, to satisfy confusion, a consumer need not engage in a detailed “side by side” comparison. With small differences in appearance or size of the rubber embellishments, a hurried consumer may nonetheless mistakenly believe sneakers come from the same source.[5] Moreover, the degree of care or caution demonstrated by a customer when purchasing a pair of casual sneakers (costing around $50) may be relatively low.

 

Following in Louboutin’s Footsteps

While the cost between a pair of Converse sneakers and French designer pumps is vastly different, the case law is applicable to both. In Christian Louboutin vs YSL, shoe designer Louboutin successfully argued that red-soles were a protectable element, constituting a distinct design. Louboutin was granted the right to prevent others from selling red-soled shoes, so as long as the entire shoe was not red. (For more analysis on the Louboutin case see the IPilogue coverage here, here and here).

It appears that the Louboutin case may strengthen the arguments put forth by Converse, as the court protected a design element manufactured into the actual design of a shoe. However, the Louboutin case was focused on the trademarked sole in relation to a distinctive color (in that case red), whereas Converse is making a broader claim by asserting trademark protection over the rubber cap, and toe-guard itself.

While the color of the Converse rubber design marks may be a moot point, it is nonetheless worth mentioning as granting trademark protection over a toe-guard and rubber cap (irrespective of color) may give Converse an unfair monopoly over a fashion style, and not a distinct indicator of source.

Rubber Caps and Toe Guards as Functional or Indicators of Source?

In their statement of claim, Converse asserts that their trademarked design has a distinctive overall appearance that is non-functional.

While it may be true that the solid black stripe on the soles does not serve an obvious function, it can be argued that a toe-guard and rubber-cap above the foot do. Given that sneakers are made up of canvas material (a cloth-like fabric that is unforgiving when wet), the toe-cap can be seen to function as a repellant of rain or other precipitation.

Furthermore, it may also be suggested that the toe-“guard”, does just that; protect the toes by serving as a rubber buffer against an otherwise malleable shoe. If the court find that these design elements are actually functional, and not indicia of the producer, then Converse’s claim will be kicked out.

 

Has Converse Stepped into a Generic Category?

Apart from the obstacle of functionality, Converse may be faced with the counter-argument that it has become a generic brand. Importantly, the design of the Chuck Taylor All-Star has remained largely unchanged since its introduction in 1908, which may be probative of a generic (yet unwavering) fashion style. Nonetheless, Converse maintains their brand has acquired substantial secondary meaning in the marketplace through their extensive and continuous use, advertising, promotion and sales. But this long-standing fame may actually serve as a double-edged sword.

Under trademark law, a brand becomes generic when, in the minds of consumers, the primary meaning of the trademark becomes the product itself rather than an indication of source. Therefore, the multi-million question is: when consumers see the rubber embellishments on a canvas sneaker, or when they hear “Converse”, do they think of the brand, or a style of shoes?

In avoiding allegations that they have become a generic brand, Converse may point to evidence that upon the takeover by Nike in 2003, Converse shoes experienced resurgence in popularity (and sales) after launching several new styles, colors. It follows that only upon the promotional “comeback” of Converse, the existence of “knock-off” Converse sneakers proliferated. In this regard, it can be maintained that Converse is not generic for a specific fashion trend, but that they are the trend.

While litigation over the style of sneakers is a not a new trend – (Adidas has famously sued, and continues to sue, several sporting goods designers for sporting multiple stripes on their apparel) – the most recent case resulting in settlement.). However, what is unprecedented with the case at hand is the sheer number of defendants targeted and the wide variety of styles that Converse claims within the ambit of its trademark. One thing is for certain; after this case, the sneaker game will never be the same.

Finally, regardless of the outcome, Converse should be prepared for the possibility that the customer perception of their brand may change after launching this mega-lawsuit. Owning a pair of Chuck Taylors has often been associated with the culture of “cool” and a symbol of an urban lifestyle. I guess we will have to wait to see if longstanding fans remain loyal to the brand, and if Converse keeps its “cool” after they go toe-to-toe in litigation.

 

Mona Zarifian is a JD Candidate at Osgoode Hall Law School and is enrolled in Osgoode’s Intellectual Property Law Intensive Program.  As part of the program requirements, students were asked to write a blog on a topic of their choice.