By: Briana Polan

Trademark protection has afforded producers the ability to provide source-identifying marks in order to reduce customer search costs in the marketplace.  In many cases, a company will seek trade dress protection, a companion of trademark, which protects packaging or appearance of products.  As with any law, various industries tend to benefit more than others.  The fashion industry, time and time again, has had an uphill battle in obtaining trade dress protection. This is due to the non-functionality requirement in obtaining trade dress protection.  There is great concern that if a functional aspect is granted trademark protection, then this creates a monopoly and hinders competition in the marketplace.

 

Two weeks ago, Converse Inc., owned by Nike Inc., sued over a dozen retailers alleging trademark infringement of their “iconic shoe design.”  Converse has both common law and federal trademark protection in their mark which “consists of 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 diamond and line patterns, and the relative position of these elements to each other.”  The description also notes “the broken lines show the position of the mark and are not claimed as part of the mark.” U.S. Trademark, Registration No. 4398753.  Converse also owns two additional marks not at issue here.  Having already served multiple cease-and- desist letters to no avail, a lawsuit was inevitable.

 

The Defendants have yet to file an answer to the complaints received. It is likely they will challenge the validity of the trademark since footwear is part of the fashion industry. This involves proving that the relevant trade dress is functional in the present scenario.  There are two forms of functionality, utilitarian functionality and aesthetic functionality.  To test utilitarian functionality, the basic question is whether the mark is essential to the use or purpose of the article.  That is, does the mark at issue make a shoe walk better?  The trademark at issue here involves a rubber midsole and toe cap.  This is up for contention. Perhaps expert testimony would shed light on whether this mark makes the shoe “walk better”.   The design mark likely provides more of an aesthetic appeal, and the rubber sole and cap are likely non-functional in the performance of the shoe.  Therefore, the next step is to determine aesthetic functionality: whether the mark places other competitors at as disadvantage because it is essential to the shoe’s success in the marketplace.  This is probably unlikely as well. The exclusive use of the Converse mark has not precluded other shoemakers from being successful in the area of athletic shoes and sneakers.  There are a variety of other designs available; thus, the protection of Converse’s mark does not hinder competition.
Either way, Converse has a strong foot to stand on.  They obtained federal registration of the trademark providing prima facie evidence of a valid mark, although this can be rebutted. Additionally, the mark at issue has been in contention before and other Defendants entered into consent judgments admitting that the mark was “non functional”.  They also added that the mark was distinctive and the shoe’s fame was connected to the brand, thus establishing secondary meaning.
Converse must prove acquired distinctiveness. This again is likely to prevail.  Converse has been around for nearly a century, selling shoes with this mark for more than eighty years.  Converse maintains their continuous use in the marketplace, as well as expenditure of significant effort and money in advertising.  Their shoes have been featured in books, movies, and television, and worn by celebrities and athletes alike.  As long as distinctiveness is acquired, Converse has a valid mark.

 

If disproving validity fails, the Defendants have another recourse: they can challenge the likelihood of confusion among consumers in the marketplace.  There are numerous factors that help determine likelihood of confusion, including the strength of the mark, actual customer confusion, the proximity or relatedness of the goods in commerce,  “bridging the gap”, the quality of the Defendant’s product, and purchaser care or sophistication.  As an average fashion consumer, and having seen converse shoes in stores as well as in movies and television, I would likely be confused to see another shoe that bared the rubber sole with the two lines and the toe cap, thereby increasing my search costs to find that shoe.

 

So congratulations fashion!  This hopefully will be one victory you can hang in the closet.

 

Bio: Briana is a Staff Member of the Journal of High Technology Law.  She is currently a 2L at Suffolk Law with a concentration in Intellectual Property.  She holds a B.A. in Music Performance and Music Education from Connecticut College and a M.M. in Instrumental Conducting from the University of Miami.