The U.S. International Trade Commission (“ITC”) issued a broad Exclusion Order upholding trademark protection of the diamond-patterned outsole portion of the shoe company’s famous Chuck Taylor sneaker. The Exclusion Order has the effect of barring imports of sneakers that infringe on the Converse diamond-patterned outsole.
The decision is considered a partial victory for defendants Walmart, Sketchers and New Balance, which were accused of infringing the trademark of the midsole – which consists of a rubber band around the front of the shoe, a toe cap and stripes on the sides of the Chuck Taylor shoe. The Exclusion Order does not prevent importations of look-a-like sneakers that contain these features, as long as they do not have the diamond patterned outsole.
Converse had sought to protect its Chuck Taylor trademarks by means of civil litigation in federal court and a complaint before the ITC. The civil litigation remains pending with the U.S. District Court in Brooklyn. The recent ITC decision could possibly be relied upon by the litigants to bolster their claims in court, as it was a mixed win for both sides.
The Converse case highlights a much-overlooked tool available to trademark owners who are seeking to protect their brand. While civil litigation offers the opportunity to win monetary damages from counterfeiters, successful actions before the ITC can result in exclusion orders that bar importations of infringing merchandise.
Please contact Christina Leonard at (212-973-7769 or firstname.lastname@example.org) for further information on this development and for additional information on how our firm can assist trademark owners assert their rights.
Compliments of Grunfeld, Desiderio, Lebowitz, Silverman & Klestadt LLP – A member of the EACCNY