By Stephen M. Ankrom
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The Court of Appeals for the Federal Circuit recently vacated a final determination by the International Trade Commission (“ITC”) in Converse Inc.’s long-running trademark infringement battle over the Chuck Taylor All Star sneaker.[1] The Federal Circuit’s key holdings are discussed below.
Background: Converse’s claimed rights in the Chuck Taylor trade dress
In 2014, Converse filed a complaint in the ITC seeking a general exclusion order pursuant to section 337 of the Tariff Act of 1930, 19 U.S.C. § 1337, (“section 337”),[2] forbidding entry into the United States of footwear that violate Converse’s common law and federally registered trademark rights in the Chuck Taylor shoe. Specifically, Converse asserted rights in the “design of the two stripes on the midsole of the shoe, the design of the toe cap, the design of the multi-layered toe bumper featuring diamonds and the line patterns, and the relative position of these elements to each other.”
A central issue before the ITC was whether Converse’s mark had acquired secondary meaning., which is necessary for trade dress protection in product design. In 2016, the ITC held in a final determination that Converse’s trademark in the midsole design of its Chuck Taylor All Star shoes had not acquired secondary meaning, and consequently there was no violation of section 337. On appeal, the Federal Circuit vacated the ITC’s determination and remanded for further proceedings.
Effect of Converse’s trademark registration
The Federal Circuit found fault with the ITC’s analysis in a number of areas. First, the Federal Circuit found that the ITC erred by not distinguishing between those alleged infringements that began before Converse obtained its trademark registration and those who began infringing afterward. Much of the ITC’s decision turned on whether Converse had a valid federal registration, which was registered on September 10, 2013. A valid federal trademark registration entitles the owner of the mark to a presumption that the mark is valid, including that it has acquired secondary meaning. 15 U.S.C. §§ 1057(b), 1115(a).
The ITC’s focus on the federal registration was an error, the Federal Circuit held, because the remaining respondents in the ITC action had first uses prior to the registration date, and the registration’s presumption of validity operates prospectively from the date of registration and cannot support a presumption of validity for the period before registration. The Federal Circuit held that on remand, Converse must establish without the benefit of the presumption conferred by a federal registration that its mark had acquired secondary meaning before the first infringing use by each respondent.
Secondary meaning standard
The Federal Circuit sided with Converse in holding that the ITC applied the incorrect legal standard when performing the secondary meaning analysis. The Federal Circuit held that the test for secondary meaning involves weighing six factors:
- 1. association of the trade dress with a particular source by actual purchasers (typically measured by customer surveys);
- 2. length, degree, and exclusivity of use;
- 3. amount and manner of advertising;
- 4. amount of sales and number of customers;
- 5. intentional copying; and
- 6. unsolicited media coverage of the product embodying the mark.
The Federal Circuit held that the ITC’s test was erroneous, among other reasons, because it set forth length, degree, and exclusivity of use as separate factors, which caused undue weight to be placed on what the Federal Circuit considered to be substantially interrelated factors.
According to the Federal Circuit, the ITC also erred in relying too heavily on prior uses that predated the first infringing uses and the date of registration. Reasoning that the most relevant evidence is the trademark owner’s and third parties’ use of the mark in the recent period before first use or infringement, the Federal Circuit instructed that the ITC, on remand, rely principally on uses within the five years prior to the first use when considering the “length, degree, and exclusivity of use.” Uses older than five years may be considered only if there is evidence that such uses were likely to have impacted consumers’ perceptions of the mark as of the relevant date.
The ITC also considered prior uses that the Federal Circuit determined not to be substantially similar to the mark when it performed its secondary meaning analysis. According to the Federal Circuit, “several of the instances of third-party use cited in the ITC’s decision are shoes that bear at most a passing resemblance” to Converse’s mark. Others instances of prior use were reproduced in low resolutions such that any meaningful comparisons could not be made.
The Federal Circuit also found that the ITC erred by placing substantial weight on a survey submitted by the respondents (the Butler survey) to support its determination that Converse’s mark had not obtained secondary meaning. The Butler survey was taken more than ten years after the earliest infringing use of Converse’s mark, and thus should be given little probative weight in the ITC’s analysis. Additionally, the ITC erred by finding that the Butler survey weighed against a finding of secondary meaning when the survey only found a lack of evidence of secondary meaning. Unless the survey affirmatively shows lack of secondary meaning, a lack of survey evidence of secondary meaning is a neutral factor which does not favor either party.
The ITC’s determination was vacated, and the Federal Circuit remanded the case back to the ITC for further proceedings consistent with the ruling.
[1] Powley & Gibson, P.C. represent Converse Inc. in lawsuits brought in the Eastern District of New York asserting infringement of the Chuck Taylor trademark by various manufacturers, distributors, and retailers. These caseshave been stayed pending resolution of the matter before the ITC.
[2] Section 337(a)(1)(c) makes unlawful the “importation into the United States, the sale for importation, or the sale within the United States after importation” of articles that infringe a trademark.