Last year, Converse sued 31 brands and retailers for trademark infringement, claiming that these brands and retailers infringed on trademarks held by Converse for its well-known Chuck Taylor sneakers.
Converse also filed a complaint with the International Trade Commission, who has been investigating the claims since November. Several of the brands, including Ralph Lauren, H&M, Zullily, and Tory Burch have settled their lawsuits with the brand. Each brand agreed to stop producing shoes that would infringe Converse’s trademarks, and pay an undisclosed amount in damages.
Converse Chuck Taylor Sneakers // via Sweet and Lonely
However, some brands are aren’t going down without a fight. New Balance, who was not one of the 31 brands sued, filed a motion for declaratory judgment, asking the court to deem Converse’s trademarks invalid in a bid to preempt any litigation from Converse.
Wal-Mart has also vowed to fight Converse’s claims. Wal-Mart filed a response with the ITC claiming that Converse’s complaint is simply trying to “extort monetary settlements” from the brands it has sued.
Wal-Mart argues that Converse’s complaint is a surprise to the industry and amounts to “anti-competitive actions.” The retailer giant said that it would fight to “preserve ‘Every Day Low Prices’ for Wal-Mart customers.”
To prove trademark infringement, you must show a likelihood of confusion, meaning that the average consumer would be unsure from where the product originated. Because Converse’s tradmark involves trade dress, which is protection of the appearance of product, the trademarks can’t be functional and must be distinctive.
Wal-Mart is arguing that Converse’s trademarks — the toe caps, the toe bumpers and stripes — are functional and therefore are protectable under trademark law. Further, Wal-Mart argues that, “Converse has not had exclusive use of the toe cap, toe bumper or midsole striping for at least 50 years, if ever. Converse has been well aware of the use by other companies of these features.”
The retailer is also claiming that Converse has known for awhile that other brands use these elements in their sneakers, and never fought for its purported trademark rights before and is fully aware that it does not have exclusive rights to these elements.
It will be interesting to see how this pans out, as it seems that this particular lawsuit will in fact go to trial, unlike many of the other lawsuits which have or will settled.