Non-traditional and fluid trademarks

The Federal Circuit in Converse, Inc. v. ITC, ___ F.3d___, 2018 WL 6164571 (Fed. Cir. 2018), gave Converse’s trademark case against several shoe companies new life; a new “sole,” if you will. Converse has long been battling Skechers, New Balance, and others, alleging trade dress infringement of its Chuck Taylor All Star shoe shown below (“Chuck Taylor All Star Mark”) both before and after Converse’s registration of the mark in 2013. Two years ago, the International Trade Commission (“ITC”) heard the case and ruled against Converse, leaving a significant scuff on Converse’s trade dress rights. The ITC viewed Converse’s Chuck Taylor All Star Mark as two separate marks—a registered mark and a common law mark—during the alleged infringements before registration and found both marks invalid and unenforceable for not having acquired secondary meaning. Now, the Federal Circuit has vacated the ITC’s ruling, and given Converse another chance to cobble its rights in the Chuck Taylor All Star Mark.

Chuck Taylor All Star Mark

First, the Federal Circuit found the ITC’s approach of viewing Converse’s Chuck Taylor All Star Mark as two separate marks “confusing and inaccurate;” instead, the case should be viewed as concerning a single mark, with different rights arising from common law and federal registration. The court also took issue with the ITC’s assessment of secondary meaning, stating that secondary meaning must be determined as of a specific date, namely, prior to each alleged infringer’s first use. In Converse’s case, the Federal Circuit joined “the majority of circuits” in holding that Converse’s registration entitled it to a presumption that the mark is valid and has acquired secondary meaning, which thereby shifts both burdens to the other parties to prove otherwise. However, the court added a vital knot to this holding: this presumption of secondary meaning only begins as of the date of registration, not earlier. As a result, Converse cannot rely on this presumption of secondary meaning for its claims of infringement occurring before registration. On remand, Converse will have to establish that its mark acquired secondary meaning in the Chuck Taylor All Star Mark before each of the alleged infringing uses occurred.

Considering the main remaining defendants started selling their allegedly infringing shoes well before Converse’s registration of the Chuck Taylor All Star Mark, this finding may have knocked Converse back on its heels. But all hope shouldn’t be lost for Converse. Although the court’s decision may not help its case against the remaining defendants, Converse should be able to lace its arguments in any future proceedings on remand with some of the Federal Circuit’s findings that are more favorable to Converse. For example, the Federal Circuit affirmed the ITC’s finding that Converse’s Chuck Taylor All Star Mark is nonfunctional and criticized the ITC’s overreliance on the defendants’ survey evidence regarding secondary meaning. Of course, the defendants may be arguing on remand that the ITC should reassess whether the products are substantially similar to Converse’s Chuck Taylor All Star Mark. Until the proceedings resume on remand, it will be difficult to predict to which side the ITC will ultimately give the boot.

“So, if you’re tired of the same old story, oh, turn some pages.
I will be here when you are ready to roll with the changes.”  Roll With The Changes,” REO Speedwagon.

A few weeks ago, a colleague asked me if I could take her place speaking on a panel about “Fluid Trademarks.”  My first reaction, expressed  silently to myself–”What in the world is a “fluid trademark?”  My second reaction, expressed out loud and with utmost confidence–”Fluid Trademarks? Sure, I’d be happy to fill in for you.”   I figured, “I’m an experienced trademark guy.  I’ve  been an adjunct professor of trademarks at two Washington DC law schools. How hard could it be?”  And, my colleague and I, along with three other trademark lawyers, were about to start our own boutique law firm specializing in trademark law.  So accepting a speaking gig would be good exposure for the new firm–Kelly IP, LLP–which we launched on April 29.

Continue Reading Like Water For Trademarks: Fluid Marks Take Shape