New Balance is declaring a major victory this week for its iconic PF Flyers brand.
In fall 2014, Converse took over 30 brands before the U.S. International Trade Commission in an effort to block competitors from selling similar styles to the Chuck Taylor sneaker. The brand pointed to three separate trademarks it owned.
In a more complete public release of its findings released this week, the commission found the Converse midsole stripe trademark invalid as many brands, including PF Flyers, have used it for many years.
”We are extremely pleased that the International Trade Commission fully supported New Balance’s position that the alleged Converse midsole trademark is invalid,” said Paul Gauron, EVP and general counsel of New Balance. “While New Balance respects competitors’ valid intellectual property rights and enforces its own trademarks in footwear, no single company owns the exclusive right to make classic athletic footwear with the combination of a toe cap, toe bumper and midsole stripes as Converse claimed in this case.”
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On June 23, FN reported the following:
Converse took home a partial win Thursday in its attempt to block competitors from selling Chuck Taylor knockoffs.
After months of deliberation by the U.S. International Trade Commission, it said that two of Converse’s trademarks for the designs on the soles of its Chuck Taylor sneakers were enforceable. The Trade Commission issued an exclusion order blocking any non-Converse shoes with the soles to be sold in the U.S.
It wasn’t the sweeping win Converse was likely hoping for though. The commission said the Converse trademark for its midsole stripe, bumper toe with diamond designs and cap-toe design wasn’t enforceable. The commission reversed a judge’s earlier finding which upheld the designs, instead saying the trademark was invalid because the designs lacked secondary meaning, or consumers no longer associated the bumper toe, mid-stripe and cap toe with just the Chuck Taylor shoe.
It’s a bit of a victory for Skechers’ Twinkle Toes brand and Bobs line, as well as New Balance’s iconic PF Flyers, which were among four firms that didn’t settle after a sweeping lawsuit was filed by Converse in 2014. Walmart Inc. and Highline United (which distributes for brands like Ash and United Nude) were the remaining firms that chose not to settle.
After the initial ruling in November, Manhattan Beach, Calif.-based brand Skechers said the judge favored on the side of its Bob’s and Twinkle Toes lines, saying that the shoes were unique enough to not be confused with All-Star styles.
“While we expected this result, we are still very pleased with the judge’s ruling on Twinkle Toes and Bobs,” said Michael Greenberg, president of Skechers, at the time. “Our investment in our distinctive designs and brand identity has helped build Twinkle Toes into the No. 1 shoe line for young girls, and both Twinkle Toes and Bobs into household names synonymous with Skechers — not with Converse or any other brand.”
Converse, at the time, also said it was a win that “validated Converse’s intellectual property rights in the iconic Chuck Taylor All Star and supported our right to enforcement.”
In October 2014, Nike-owned Converse sued 31 different competitors for violating trademarked elements of its iconic Chuck Taylor All Star style. Specifically, Converse sued for violation of its bumper toe, cap-toe and midsole stripe and sole designs.
Besides filing suit against companies ranging from H&M, Fila, Ralph Lauren and Tory Burch, Converse took its claims to the U.S. International Trade Commission in an effort to get styles it considered counterfeit blocked from U.S. stores. The trade commission can block any infringing products from being imported.
The majority of brands settled out of court, some agreeing to go as far as destroying current product.
