Obvious Copying of an Iconic Design Yet Still an Uphill Battle

Originally posted 2018-11-19 11:19:19

By Diana Chan | amdlawgroup.com

126974185_976be8b9a0_zOwned by Nike since 2003, Converse’s Chuck Taylors have existed as a classic pair of shoes. Converse’s Chuck Taylor All Stars, commonly known as “Chucks,” are well-recognized by its classic rubber toe and sole and variety of colors.  But over the years, look-a-likes from brands like Skechers, H&M, Fila, Ralph Lauren, Walmart, and several others have now led Converse to sue 31 companies for trademark infringement.

In 2013, Converse received federal trademark registration for various features of its shoe as part of its trade dress: the toe bumper, cap of the shoe, and the upper and lower stripes around the bottom of the shoe.  Often trademark infringement cases are focused on an infringer using a brand name or logo. For Converse, the issue is over the design of the shoe. Converse will have to show that the design is attributable to the brand. In other words, when the consumer sees the design, what do they think of? If consumers think of Converse, the company has a stronger case in proving trademark infringement. If consumers see the design as merely a style choice, Converse’s case is weakened.

Another major hurdle is the functionality of the design elements. The functionality doctrine prevents someone from registering an essential feature of a product.  For instance, it could be argued that the toe bumper and cap of the shoe are functional because those elements are essential to the use of shoes and would put competitors at a significant disadvantage.

Despite what seems like obvious copying of the Chuck Taylor design, Converse still has its work cut out for them and may have a difficult time proving trademark infringement as they move forward with the lawsuits.

Resources: http://www.nytimes.com/2014/10/15/business/converse-sues-to-protect-its-chuck-taylor-all-stars.html?_r=1

Image Credit: https://flic.kr/p/cdM16