Protecting Designs Through Trademarks and Trade Dress at the USITC

• Author: Patrick J. Stafford is an associate at Paul Hastings, LLP who specializes in intellectual property. Charles J. Hawkins is assistant general counsel, intellectual property & litigation, at Volkswagen Group of America, Inc. who specializes in intellectual property issues. The article reflects the views of the authors alone and not their employers.
• Position: This article analyzes a recent investigation from the USITC in which Converse sought to enforce registered trademarks as well as general trade dress rights covering its Chuck Taylor All-Star shoes. While the law remains in flux, this case serves as an interesting study on the use of trade dress and trademarks to protect product designs. The...
• Pages: 47-49

Published in Landslide® magazine, Volume 9, Number 4, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2017 by the American Bar Association. Reproduced with permission. All rights reserved. This

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Like all areas of intellectual property, trademark law

has experienced signicant and wide-ranging develop-

ments in 2016. One particular area of interest is the

enforcement of trademark and trade dress rights at the U.S.

International Trade Commission (USITC). This article ana-

lyzes a recent investigation from the USITC, Certain Footwear

Products, Inv. No. 337-TA-936, in which Converse sought

to enforce registered trademarks as well as general trade

dress rights covering its Chuck Taylor All Star shoes against a

number of respondents, including Wal-Mart, Skechers, and

New Balance. While the USITC found no violation for one

trademark and associated trade dress, the USITC did nd

a violation of two registered and common law trademarks

asserted by Converse. While the law remains in ux, this

case serves as an interesting study on the use of trade dress

and trademarks to protect product designs. The result of this

case also serves as a useful aid in assessing proper protec-

tion for fashion products and designs.

Overview of the USITC Investigation

On August18, 2014, Converse led a complaint in the

USITC alleging that a number of respondents, including Wal-

Mart, Skechers, and New Balance, unlawfully imported into

the United States, sold for importation, and/or sold within

the United States after importation certain footwear products

that violated registered and common law trademarks Con-

verse asserted covered its Chuck Taylor All Star shoes.1 The

complaint alleged the respondents violated section 337 of

the Tariff Act2 through unfair competition, false designation of

origin, common law trademark infringement, and trademark

dilution.3 Specically, Converse asserted U.S. Trademark Reg-

istration Nos. 4,398,753 (the ’753 trademark); 3,258,103

(the ’103 trademark); and 1,588,960 (the ’960 trademark),

as well as the corresponding common law trademarks.4

Protecting

Designs

through

Trademarks

and Trade

Dress at the

USITC

By Patrick J. Stafford and Charles J. Hawkins

Photo: iStockPhoto