Can the style of a shoe be subject to trademark protection?
Converse All Star shoes, with their white soles and laces and color-blocked sides, are instantly recognizable. According to Nike-Converse, Inc., the famous Chuck Taylor All Star sneaker “look” merits trademark protection.
If they’re right, it could spell big trouble for over 30 U.S. and foreign-based companies in the New York lawsuit, including major players like Walmart and Ralph Lauren. Converse is also asking the International Trade Commission to ban all imports and sales of Chuck Taylor look-alikes.
What can a Trademark protect?
But can something like a “look” be protected and subject your business to liability under trademark law? Or conversely (get it?), can you protect something like a “look” that your business has developed?
In the United States, trademark protection extends beyond marks registered with the U.S. Patent and Trademark Office. Protectable trademarks under U.S. Federal Law can consist of any word, name, symbol, device, or any combination thereof that is used by a person to “identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.” The primary purpose of trademark law is to protect consumers from being deceived as to the source of the goods they are buying. However, trademark law is also not meant to give one manufacturer monopoly use of a product feature.
Converse owns registered trademarks in the Chuck Taylor logo, but it’s not just the famous white circle (with the star and “Converse All Star” in the middle) that is at issue. Converse is also arguing that it owns trademarks in the overall look and design of its sneakers. Many other companies produce or sell sneakers that resemble converse sneakers but at a fraction of the price.
To win, Converse will need to prove that the Chuck Taylor “look” is distinctive and warrants trademark protection. Trademark lawsuits often revolve around consumer confusion, with a crucial factor being whether or not consumer will be confused as to the source of a goods. Will consumers that see sneakers with a similar design to the Chuck Taylor All Stars think that the sneakers came from Converse? That is now a question for the courts to decide.
What This Means for Your Business
Sometimes conducting a basic trademark search is not enough to avoid litigation. Even though your product design may slightly differ from that of a competitor, or may not use a competitor’s registered trademark such as the “Chuck Taylor” logo, that competitor may still have a valid claim under trademark law. Ultimately the court may find in your favor, and that no consumer would be confused as to whether or not your product came from the competitor. Coming to this resolution or even a settlement, however, will likely require exorbitant attorney fees and litigation costs. Additionally, trademark laws and protectable product features will vary by country.
What does this mean for your company?
While a U.S. Patent and Trademark Office search and a search of any other relevant international trademark office where you may do business are good starts, we recommend that you consult with an attorney consider any other relevant protectable design or product features. You may also want to consider which design features of your own products might warrant protection and how to market and manufacture your products accordingly.
Researching registered marks as well as identifying potential liability that might arise from other product and design features with one of the attorneys at Whitcomb Law, P.C. can save you a lot of money and trouble ahead.