Shapiro Arato Files Amicus Brief in Converse v ITC Trademark Case

On March 8, 2017 the United States Court of Appeals for the Federal Circuit granted Shapiro Arato’s motion to file an amicus brief in Converse, Inc. v. International Trade Commission. Shapiro Arato filed the brief on behalf of Tiffany & Co., Christian Louboutin SAS, and the Fashion Law Institute.

In 2014, Converse sued 31 companies for infringing upon the Chuck Taylor All-Star, a sneaker it first created in 1917. It also pursued an additional complaint with the International Trade Commission seeking to bar the importation of the allegedly infringing goods. The ITC judge initially ruled that Converse owned two protectable trademarks: one was a mark in the midsole design of its sneaker – namely, the white toe cap, multi-textured toe bumper, and two midsole stripes – and the other in the shoe’s diamond patterned outsole. The full ITC affirmed the finding regarding the outsole, and it banned the importation of shoes featuring that design. The full ITC also invalidated the trademark in the midsole design, finding that it lacked secondary meaning.

Our brief did not support either party in the lawsuit with respect to the validity of the disputed midsole trademark. Instead we argued on behalf of the amici, who are all active contributors to the fashion industry, that exclusivity of use by trademark holders should not be given undue weight in the Court’s determination of whether Converse had acquired secondary meaning in its midsole design. Exclusivity is only one of seven established factors that courts must consider when determining secondary meaning and it is a proxy for the larger question of how consumers perceive the source identifying function of a mark. In addition, demonstrating exclusive use of a design element is not required by the Lanham Act or by the rules and regulations of the United States Patent and Trademark Office in order to demonstrate secondary meaning. We demonstrated that because unique designs in today’s marketplace are immediately copied early in the product’s life, an overemphasis on exclusivity could unfairly prevent the establishment of secondary meaning by creators of fashion design and could allow counterfeiters to undercut the rights of legitimate trademark holders. We requested that the Court refrain from overemphasizing substantial exclusivity of use as a factor in establishing secondary meaning and instead recognize its limited and nuanced role in evaluating the legitimacy of trade dress protection.

Partner Cynthia S. Arato and Matthew Craig co-authored the brief. The case is Converse v. ITC, No. 16-2497. A copy of the brief is available here.