Today the Federal Circuit issued an opinion in Converse v. International Trade Commission, a trademark case involving the midsole design of Chuck Taylor All Stars. The decision was a major victor for Converse, which will now have another opportunity to prove that Skechers, New Balance, and the owners of the Ash brand — the remaining intervenors in the case — infringed the mark and to defend its validity.
The opinion is also significant for trade dress in general, clarifying that claimants must demonstrate the existence of secondary meaning before the first use in each case of infringement, and also that the relevant period for analyzing secondary meaning is five years prior to registration or prior to first infringing use, whichever is earlier. In addition, the Federal Circuit adds unsolicited media coverage to its list of factors to consider in assessing secondary meaning and changes the way it treats the factors of length, degree, and exclusivity of use, noting in passing that each of the 11 circuit courts has a slightly different list. SCOTUS, are you listening?
Overall, Converse’s attempt to protect its classic Chucks is still a marathon rather than a sprint, but the company has pulled ahead of its competitors for now.
Below: the Federal Circuit’s ruling and the Fashion Law Institute’s amicus brief!converse-Opinion.10-30-2018-federal-circuit