A while back I wrote about “trade dress,” a subset of Trademark law. Trade dress is a term of art that references an iconic element that is inextricably linked in the mind of a consumer to a specific brand. Think Tiffany blue box. Louboutin’s red-soled black shoes.
Recently Nike launched a lawsuit against 31 different Defendant’s over the Converse All Star Chuck Taylor brand shoes. Converse is owned by Nike. In my mind, there is no doubt that Chuck Taylors are iconic. When I think of a hipster, in my mind’s eye, they are wearing Chuck’s. I googled “hipster clothing” and up popped a HuffPo article entitled “13 Most Hipster Items.” What’s #3 on the list? “Beat up Converse” with a pic of a classic black pair of Chuck’s. (http://www.huffingtonpost.com/2014/07/16/hipster-clothing_n_5589392.html.)
Converse (aka Nike) is suing Sketchers, WalMart, H&M, and others who are “mass-producing, distributing, or selling” sneaks that knock off the look of Chuck Taylors. Nike has been sending out cease and desist letters for the last 6 years. Since the knock offs are everywhere, no one was scared off by a mean letter. Nike got fed up and sued ‘em.
An interesting aspect of this litigation is that the copycat shoes are not stealing the Converse name or logo. They have their own names. Sketchers markets theirs as “Bobs Utopia” or “Bobs Sky Line” along with other names. The basis of the litigation is that the use of the design: the shape, the similar markings, the distinctive toe cap, is a trademark infringement and confuses consumers or is so closely associated with Chuck Taylor’s that it infringes on Nike’s trademark.
Trademarking design elements is becoming more prevalent. I searched the US Patent & Trademark Office data base, and found a 1934 “Chuck Taylor” trademark, along with this description: “Shoes made of rubber, leather, fabric, and combinations thereof.”
In 2011, this was the description of the Chuck Taylor trademark,
“The mark consists of the three dimensional trade dress design of the iconic and classic Chuck Taylor All Star basketball shoe for which the following primary features are claimed: (a) Multi-Patterned Rubber Toe Strip. The rubber toe strip has four layers of bands featuring intricate and distinct patterns of three-dimensional diamonds and lines. (b) Ankle Patch on the Inside Ankle. The round patch design with double dashed line just inside the boundary of the circular patch, with a star in the center. (c) Double Rand Stripes. Two parallel horizontal lines run along the rubber outsole of the shoe. The uppermost contrasting stripe runs along the edge of the rubber outsole around the entire circumference of the shoe, including on the toe cap. The second contrasting stripe appears midway along the rubber outsole and runs from the front edge of the license plate heel tab to the back edge of the rubber toe bumper. (d) Brushed Metal Grommets in Medial Side Arch. Two round brushed steel grommets are placed in a horizontal line above the inside medial arch of the shoe. (e) Brushed Metal Eyestay Grommets. A series of equally-spaced wide, round brushed metal eyestay grommets are part of the lacing system instead of hooks, loops, D-rings, or other holding and lacing mechanisms. (f) Convex Rubber Toe Cap. A raised, protruding rubber toe cap. (g) Double Stitching and Box-Like Stitch Along the Upper. (h) Top Line Collar Throat Shape. The matter shown in broken lines, namely, the license plate heel tab as well as the outline of the shoe along the upper, the tongue, the back edge, the rear panel, and the sole are not part of the mark. The broken lines serve only to show the position or placement of the primary features of the trade dress. The dashed lines indicating the Double Stitching and Box-Like Stitch Along the Upper are part of the mark.”
Converse wants to preserve its brand and its market share. The cool kids are wearing Chucks – I have a pair of pink ones. In 2014, Converse sales were up 16% topping out at 1.7 Billion. Nike doesn’t want the brand diluted by cheap copycats.
So what of the copycatters? They have a huge incentive to vigorously defend. Every time one of those mean letters got balled up and tossed into the trash, they were on notice that the product being placed into the GLOBAL marketplace was a potential trademark infringement. That’s got to translate to $$$$$$$. And, removing the knock offs from the shelves is not sufficient. Nike wants that as well as all the existing inventory (tons and tons of it) destroyed. Another boatload of $$$$$. One defense is sure to be that Converse acquiesced for years doing nothing to protect the brand and that in the 100 years that Converse has been around the shoes have become “generic” and have lost their trademark protection.
I have been annoyed by Sketchers since they totally copycatted Toms, so I hope Nike kicks Sketchers butt good and hard.
Recently Nike launched a lawsuit against 31 different Defendant’s over the Converse All Star Chuck Taylor brand shoes. Converse is owned by Nike. In my mind, there is no doubt that Chuck Taylors are iconic. When I think of a hipster, in my mind’s eye, they are wearing Chuck’s. I googled “hipster clothing” and up popped a HuffPo article entitled “13 Most Hipster Items.” What’s #3 on the list? “Beat up Converse” with a pic of a classic black pair of Chuck’s. (http://www.huffingtonpost.com/2014/07/16/hipster-clothing_n_5589392.html.)
Converse (aka Nike) is suing Sketchers, WalMart, H&M, and others who are “mass-producing, distributing, or selling” sneaks that knock off the look of Chuck Taylors. Nike has been sending out cease and desist letters for the last 6 years. Since the knock offs are everywhere, no one was scared off by a mean letter. Nike got fed up and sued ‘em.
An interesting aspect of this litigation is that the copycat shoes are not stealing the Converse name or logo. They have their own names. Sketchers markets theirs as “Bobs Utopia” or “Bobs Sky Line” along with other names. The basis of the litigation is that the use of the design: the shape, the similar markings, the distinctive toe cap, is a trademark infringement and confuses consumers or is so closely associated with Chuck Taylor’s that it infringes on Nike’s trademark.
Trademarking design elements is becoming more prevalent. I searched the US Patent & Trademark Office data base, and found a 1934 “Chuck Taylor” trademark, along with this description: “Shoes made of rubber, leather, fabric, and combinations thereof.”
In 2011, this was the description of the Chuck Taylor trademark,
“The mark consists of the three dimensional trade dress design of the iconic and classic Chuck Taylor All Star basketball shoe for which the following primary features are claimed: (a) Multi-Patterned Rubber Toe Strip. The rubber toe strip has four layers of bands featuring intricate and distinct patterns of three-dimensional diamonds and lines. (b) Ankle Patch on the Inside Ankle. The round patch design with double dashed line just inside the boundary of the circular patch, with a star in the center. (c) Double Rand Stripes. Two parallel horizontal lines run along the rubber outsole of the shoe. The uppermost contrasting stripe runs along the edge of the rubber outsole around the entire circumference of the shoe, including on the toe cap. The second contrasting stripe appears midway along the rubber outsole and runs from the front edge of the license plate heel tab to the back edge of the rubber toe bumper. (d) Brushed Metal Grommets in Medial Side Arch. Two round brushed steel grommets are placed in a horizontal line above the inside medial arch of the shoe. (e) Brushed Metal Eyestay Grommets. A series of equally-spaced wide, round brushed metal eyestay grommets are part of the lacing system instead of hooks, loops, D-rings, or other holding and lacing mechanisms. (f) Convex Rubber Toe Cap. A raised, protruding rubber toe cap. (g) Double Stitching and Box-Like Stitch Along the Upper. (h) Top Line Collar Throat Shape. The matter shown in broken lines, namely, the license plate heel tab as well as the outline of the shoe along the upper, the tongue, the back edge, the rear panel, and the sole are not part of the mark. The broken lines serve only to show the position or placement of the primary features of the trade dress. The dashed lines indicating the Double Stitching and Box-Like Stitch Along the Upper are part of the mark.”
Converse wants to preserve its brand and its market share. The cool kids are wearing Chucks – I have a pair of pink ones. In 2014, Converse sales were up 16% topping out at 1.7 Billion. Nike doesn’t want the brand diluted by cheap copycats.
So what of the copycatters? They have a huge incentive to vigorously defend. Every time one of those mean letters got balled up and tossed into the trash, they were on notice that the product being placed into the GLOBAL marketplace was a potential trademark infringement. That’s got to translate to $$$$$$$. And, removing the knock offs from the shelves is not sufficient. Nike wants that as well as all the existing inventory (tons and tons of it) destroyed. Another boatload of $$$$$. One defense is sure to be that Converse acquiesced for years doing nothing to protect the brand and that in the 100 years that Converse has been around the shoes have become “generic” and have lost their trademark protection.
I have been annoyed by Sketchers since they totally copycatted Toms, so I hope Nike kicks Sketchers butt good and hard.