The iconic Chuck Taylor sneaker was involved in a recent case that has the attention of trademark watchers. The bone of contention was the familiar look of the Chuck Taylor sneaker worn by generations of American kids (and adults), and whether shoes imported by Skechers and others were infringing. The case originated before the International Trade Commission, where a trademark owner can potentially shut down imports of infringing goods before they hit the U.S. market. The recent decision was by the U.S. Court of Appeals for the Federal Circuit and can be found here.

The drawing below shows what Converse claims as the trademark (the mark is shown in solid lines; the dotted lines are parts of the sneaker that are not claimed as part of the mark):

The mark is not a word or a symbol; instead, Converse claimed a trademark consisting of a product configuration. In other words, the claim is that there are aspects of the look of the product that allow consumers to identify it as Converse’s Chuck Taylor sneakers, so that when they see those things on a shoe, they recognize it as a Converse shoe even without seeing the star logo or the word “Converse.” Specifically, Converse claimed that the two stripes on the shoe’s midsole, plus the toe cap, plus the “toe bumper” with a diamond-and-line pattern, all arranged in a certain way, were the trademark. Converse got that mark registered in 2013, and claimed rights based on the registration along with “common law” rights (meaning rights that existed without the registration).

It’s hard to show that a product configuration is a trademark. A word mark or a logo may often be considered “distinctive,” and therefore entitled to protection as a trademark, from the time it starts being used. A product configuration is never distinctive from the beginning; it can only become distinctive by being recognized by the public as a trademark. In trademark language, that is called “secondary meaning” – something that would not ordinarily be a trademark has acquired trademark significance because the public has learned that it indicates a particular product or producer.

It’s particularly hard to show that a product configuration has secondary meaning because we’re not used to seeing the design of a product as a trademark. It usually takes a lot of time, along with exclusive use of the particular design and strong sales of the product, for the public to identify a product looking a certain way as coming from a particular source. Adding to the challenge is the fact that competitors are likely to produce knock-offs of a successful product – which they are normally entitled to do. Knock-offs make it harder for the public to identify the design as indicating a specific source because they muddle the association between the look and the source.

Converse thought that several manufacturers were importing infringing shoes into the U.S., so it filed a complaint with the ITC asserting its registration and its claimed common law rights, and asked for an order that those products be excluded from the U.S. market. Some of the importers argued that Converse’s claimed mark was not valid because consumers did not recognize shoes with the claimed features as being Chuck Taylors; that is, that those features did not have secondary meaning. And they had a survey to back them up. The ITC agreed that the mark lacked secondary meaning and therefore was invalid, but also found that if it was valid, the imports infringed.

Converse appealed, and while the appellate decision is of interest to trademark practitioners, it’s mostly pretty technical stuff for purposes of this blog.

The big lesson of the case – more of a reminder – is that when a dispute comes up, it’s useful to have registered your mark because your registration creates a presumption that the mark is valid. That makes it easier to prove your case against an infringer, including proving secondary meaning if your mark is a product configuration. Which is not easy. Part of the decision in the Converse case dealt with when the configuration had to have secondary meaning, and while it’s hard to prove that the look of your product has secondary meaning today, it’s even harder to prove that it had secondary meaning ten years ago. If the infringement began before the registration issued, the court held that Converse had to show that its product design had secondary meaning before the infringement began. On the other hand, if the infringement began after the registration issued, the accused infringer had to prove that the product design did not have secondary meaning when the registration issued. Burden of proof makes a difference, and could easily be the difference between winning and losing.

Another lesson (or reminder) is that if you can prove your case before the ITC, you can get an order to prevent importation of products that infringe your trademark. In the right situation, that can be a very helpful strategy.

Probably the most entertaining part of the opinion, though, was the appendix, which featured a gallery of historic basketball sneaker designs (relevant to exclusive use and secondary meaning). Here are some samples:

Compare those to the author’s Chuck Taylor sneaker: