Converse Reaches Settlement Agreement with Ralph Lauren, New Balance Gearing Up For a Fight

Back in October, Converse sued over 30 brands for trademark infringement, and filed a complaint to the International Trade Commission.

Converse claimed in its lawsuits that these brands and retailers have infringed the American shoe brand’s trademarks and have produced and sold shoes that are confusingly similar to the Chuck Taylors that Converse has become famous for. The specific trademarks in question are the rubber stripe around the shoe and the pattern on the sole of the shoe.

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Converse ‘Chuck Taylor’ Sneaker via converse.com

Included in the brands named in the complaint is American brand, Ralph Lauren. This past week, Converse and Ralph Lauren seemed to come to a settlement agreement and jointly filed a motion to terminate the pending suit.

In the settlement agreement, Ralph Lauren has agreed to destroy all products named in the complaint, including parts, tools, molds, advertising/promotional materials and packaging. Ralph Lauren also agreed to no longer manufacture, sell, import or export any products that could infringe Converse’s trademark.

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Polo Ralph Lauren ‘Vaughn’ Sneaker via macys.com

This is a pretty large inventory for the American brand to destroy as the complaint listed 36 shoe styles that Converse believed infringed its trademarks. Ralph Lauren will also pay a settlement amount, though that number was not disclosed to the public.

So, while Ralph Lauren has agreed to settle and New Balance, which was not named in Converse’s complaints in district court or with the ITC, is taking an entirely different approach. The footwear brand has in fact filed a complaint for declaratory judgment in Massachusetts District Court.

In its complaint, New Balance is asking the judge to declare that it has not violated any of Converse’s trademarks and to cancel Converse’s trademarks related to Converse’s lawsuits. While not named in Converse’s lawsuits, New Balance claims that they met with Converse last year to understand Converse’s claims against other brands better.

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PF Flyers ‘Center Hi’ Sneaker via pfflyers.com

New Balance is particularly concerned over any claims that Converse might have against its brand, PF Flyers, which produces shoes similar to Converse sneakers. In its complaint, New Balance claims that it proposed a coexistence agreement, which means both parties would agree to coexist in the marketplace and not claim infringement by the other. Converse rejected the agreement and according to New Balance threatened to add New Balance to its already existing ITC complaint.

So, this lawsuit is effectively a pre-emptive strike to try and prevent Converse from suing New Balance for any alleged infringement. In its complaint, New Balance argues that the lawsuits that Converse has brought against a significant number of brands and retailers is its attempt to remove competition in the marketplace.

I can’t decide where I stand on this case. On one hand, the Chuck Taylor style is so incredibly iconic and so very much linked to Converse that it seems like a no-brainer that the company should be able to protect this style, especially since its a signifier of the brand and its history.

On the other hand, the issue then becomes how far a brand can go to protect certain elements of a shoe, or a dress, or a skirt. Does protection of the Chuck Taylor style mean that no other brand can make sneakers with a rubber stripe around the shoe and the specific pattern on the sole of the shoe?

But, then it brings up the point that Converse isn’t asking that no other brand ever make sneakers again, but rather that they don’t misappropriate certain elements and trademarks that are associated with Converse.

It will be interesting to see how the court responds to New Balance’s lawsuit and how the brands named in Converse’s complaint respond. Will they go the route of Ralph Lauren and quietly settle or will they gear up for a fight à la New Balance. Wait and see!

Beeta J.

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