Fox Team Scores Major ITC Victory in Converse Trademark CaseJune 27, 2016 – Press Releases
A team of Fox Rothschild intellectual property litigators led by Jeff E. Schwartz earned a significant victory on behalf of client Highline United, LLC for its sales of ASH branded footwear when the U.S. International Trade Commission last week invalidated both the common law and registered trademarks for Converse's Chuck Taylor All Star shoe and confirmed that the ASH shoes being sold by Highline did not infringe the asserted trademarks.
In this high-profile and closely watched case, Converse (a subsidiary of athletic wear giant Nike) sued 31 footwear companies as respondents in the ITC in October 2014 for allegedly infringing Converse’s common law and federally registered trademarks for a sneaker design consisting of a rubber toe cap, a rubber texturized toe “bumper” around the front portion of the shoe and two stripes along the sides of the sole.
By the time the case went to trial in August 2015, only four respondents remained in the lawsuit after the others had either settled or defaulted: Highline United, New Balance, Skechers and Wal-Mart. Fox’s trial team, comprised of Schwartz, Austen Endersby and Catina Stuart, represented Highline at the week-long trial in August 2015. The team was assisted by Michael Leonard, Christopher Olszyk and Seth Kramer.
The long-anticipated decision from the ITC confirmed the ruling issued in November 2015 by an administrative law judge that Converse's alleged common law trademark is invalid. The ITC, however, reversed the administrative law judge’s ruling that Converse’s registered trademark (which covers the same design as the alleged common law trademark) was valid.
“This is a huge win,” Schwartz told Law360. “This validates what we’ve said all along, that Converse did not have a valid trademark for the midsole portion of the shoe.”