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Converse, Inc. v. ITC - 909 F.3d 1110 (Fed. Cir. 2018)

Rule:

In order to prevail on a claim of trademark infringement, secondary meaning must have been acquired by the date of first infringing use. To the extent an alleged infringer challenges the present validity of an asserted trademark registration, validity depends on whether the mark had acquired secondary meaning as of the date of registration. 

Facts:

U.S. Trademark Registration No. 4,398,753 (the '753 trademark) was issued to Converse on September 10, 2013, for the midsole design of its Chuck Taylor All Star shoes, describing the trade-dress configuration of three design elements of the shoes. It described in the registration, "the mark 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 diamonds and line patterns, and the relative position of these elements to each other." Converse filed a complaint with the U.S. International Trade Commission (ITC) alleging violations of section 337 of the Tariff Act of 1930 by various respondents in the importation into the United States, the sale for importation, and the sale within the United States after importation of shoes that infringe its trademark. Particularly, Converse alleged infringement of Converse's rights in trade dress arising from the common law and its trademark registration. The ITC determined there was no violation because it found the registered mark invalid and that Converse could not establish the existence of common-law trademark rights. The ITC noted that if Converse's mark were valid, the various accused products would have infringed Converse's product. The case was appealed.

Issue:

Did the ITC err in its ruling?

Answer:

Yes

Conclusion:

The United States Court of Appeals for the Federal Circuit vacated the ITC's decision and remanded the case for further proceedings. The court held that the U.S. International Trade Commission erred when it found that although athletic shoes that were imported into the United States would have infringed U.S. Trademark Registration No. 4,398,753 if the mark was valid, there was no violation of 19 U.S.C.S. § 1337 by companies that imported shoes into the United States because the registered mark was invalid and the company that registered the mark did not establish the existence of common-law trademark rights. The ITC's decision had to be vacated because, inter alia, it failed to distinguish between companies that allegedly infringed the owner's trademark before the owner obtained its trademark registration and those that began infringing afterward, and relied too heavily on prior uses long predating the first infringing uses and the date of registration.

 

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