In October 2014, Converse sued 31 companies for infringing upon the Chuck Taylor All-Star—a sneaker it first created in 1917 —although brands have been knocking off this shoe since the dawn of time. The brand claimed that trademark infringement had occurred and believed that each of these companies stole at least one of three trademarks: the stripes going around the shoe, the rubber toe bumper, and the toe cap. Among the companies named in the lawsuits, many chose to settle early on in the case, including Ralph Lauren, FILA, and H&M. On the other hand, companies such as Walmart and Skechers chose to defend their strikingly similar footwear. Last November, an International Trade Commission judge ruled that the stripes, toe bumper, and toe cap all constituted valid trademarks that were worthy of protection.
On June 23, after review by the full ITC, the 2014 decision was overturned. Invalidating the trademarks for the Chuck’s stripes, toe bumper, and toe cap, the ITC said that only the diamond-patterned outsole on the shoes was a valid trademark. The ITC further banned any company that features the trademarked diamond-patterned outsole on any of its silhouettes from importing those shoes into the U.S. This exclusion affords Converse, who has been owned by Nike, Inc., since 2013, the ability to go after and sue any company that uses the Chuck’s outsole in the future. Despite this ruling, companies wishing to use any of the other elements of the Chuck are free to do so. Converse can appeal the ITC ruling, which it will likely do.
This means that brands such as PF Flyers, which has a very similar sneaker to the Converse Chuck Taylor All-Star and is a contemporary of the brand, were allowed to continue to manufacture their products without any consequences. This is because they don’t share the same outsole.
This loophole was a win for brands with similar sneakers to the Chuck Taylor. According to Footwear News, "It’s a bit of a victory for Skechers’ Twinkle Toes brand and Bobs line, as well as New Balance’s iconic PF Flyers, which were among four firms that didn’t settle after a sweeping lawsuit. The majority of brands settled out of court, some agreeing to go as far as destroying current product."
While the decision is only a partial win for Converse, it is a major victory for people who are against shoe replication and the copying of designs. Shoe designs in general have extremely limited protection under trademark law. Before the adidas Stan Smith decision—when a federal judge ordered Skechers to stop selling its Onix sneaker, which was practically an exact duplication of the Stan Smith—the only notable trademark case in favor of protecting shoe designs was in 2012, when Christian Louboutin was granted trademark protection for its iconic red soles.
Although only one element of the Chuck Taylor was deemed protected under trademark law, the potential impact on the protection of these designs can be substantial. The Converse decision, coupled with the outcome of the adidas Stan Smith case, provides necessary authority for footwear brands and is a step in the right direction for companies wishing to seek trademark protection for their sneaker designs. The ripple effect of these cases could eventually end up tipping the scale in favor of trademark protection for sneaker designs and provide a more equitable avenue for the protection of these designs. While trademark protection for shoe designs is still not a sure thing, adequate progress is being made. Due to these recent outcomes, it is possible that more sneaker brands will starting suing for trademark protection, which, really, is a good thing.
Will Nike be able to sue A Bathing Ape and Celine for ripping off its Air Force 1, or Saint Laurent Paris for copying the Air Jordan 1? Only time and future lawsuits will tell.
Jared Goldstein is a legal intern at Complex. Follow him on Instagram here.
