In one of the most hotly-litigated trademark cases ever decided by the International Trade Commission, Converse's "midsole" trademark covered by U.S. Registration No. 4398753 has been found invalid. As shown below, Converse's trademark covered (1) the design of two stripes on the shoe's midsole, (2) the design of the toe cap, (3) the design of the multi-layered toe bumper featuring diamonds and line patterns, and (4) the relative position of these elements to each other:
Converse had sought a general exclusion order barring the importation of shoes bearing the above design, initially naming over 30 respondents. Most respondents settled, but Walmart, Skechers, Highline, and New Balance took the case to trial.
The ALJ in the Initial Determination narrowly found that Converse's midsole design had acquired secondary meaning, in spite of survey evidence showing that only 21.5 percent of consumers associated the midsole design with a single company (which the ALJ acknowledged was insufficient to support secondary meaning). The ALJ gave weight to other factors such as Converse's sales and advertising evidence and, while recognizing it was a close call, ultimately found secondary meaning due to the deference afforded Converse's federal registration. Somewhat paradoxically, the ALJ found that Converse's common law rights in the midsole design were not protectable, as those rights could not benefit from the presumption of validity afforded federal registrations.
The Commission reversed the ALJ's finding of secondary meaning with respect to the midsole design. In particular, the Commission found that the ALJ had given insufficient weight to the extensive use of the midsole design by multiple third parties over the last eighty years, which weighed "heavily against a finding of secondary meaning." Additionally, the survey evidence, which provided the "strongest and most relevant" evidence as to whether secondary meaning existed, favored the respondents.
Accordingly, the Commission found no violation of Converse's midsole trademark, either with respect to Converse's registered trademark or its common law rights.
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