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New Balance Wins Trademark Infringement Case against Converse

Written by Fozia Cheychi on 18 July 2016

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In 2014, converse filed a lawsuit with the ITC requesting a general exclusion order in relation to its trademark rights regarding the toe cap, toe bumper and midsole stripe design accents in its iconic Chuck Taylor All Star sneakers. If Converse had been successful it would have meant that other companies would have been prohibited from importing any shoe with those design elements.

Converse had sued in the region of 32 manufacturers and retailers, including (amongst dozens of others) the likes of H&M, Walmart, Sketchers and New Balance, for allegedly copying and making knock-offs of its Chuck Taylor design, thus infringing on its Chuck Taylor All Star sneaker design and the trademarks related to it. The Chuck Taylor All Star sneaker was first released in the 1940’s and it features a distinctive rubber toe cap and striped midsole. Converse, which has been owned since 2003 by sportswear giant Nike Inc was awarded the trademark on the Chuck Taylor shoe in 2013.

New Balance claimed that it had a meeting in January 2015 with Converse, in which the company asked Converse for clarification on the infringement claims and further New Balance proposed a coexistence agreement with Converse that was ultimately rejected.

New Balance, which owns the PF Flyers brand of footwear, responded to the lawsuit by filing a lawsuit against Converse in December, asking a Massachusetts federal court to declare that it is not infringing Converse’s trademark rights for the Chuck Taylor All Star sneaker. By doing so, New Balance had sought to protect its ability to continue selling its PF Flyers range which features toe caps, toe bumpers and stripes. This recent ITC decision has deemed Converse’s Chuck Taylor midsole trademark invalid, the opinion notes that numerous companies including New Balance have used similar designs for decades. Further the ruling protects New Balance’s right to continue to import and sell its classic PF Flyers’ footwear in the United States.

A statement released by New Balance states: “We are extremely pleased that the International Trade Commission fully supported New Balance’s position that the alleged Converse midsole trademark is invalid”. Paul Gauron, Executive Vice President and General Counsel at New Balance continued, “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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