The Greek philosopher Heraclitus once said, “Nothing is constant, but change.” This applies markedly to the fashion industry. Style is a constantly evolving phenomenon. We laughed at the clothes our parents wore but it’s not long till our children start mocking the clothes we wear. Each generation etches its own signature in the ebbs of time but one product has stood out amongst the rest. Something that our grandparents wore while playing basketball, our parents wore while being rebels and listening to punk, and something most of us have worn at some point in our lives.
You guessed it; I am talking about Converse’s Chuck Taylors All Stars. Even if you do not own a pair (what is wrong with you!) you can probably recognize a converse just by looking at the iconic rubber toe topper, black stripes, and logo placement. I personally believe the design has attained secondary meaning in the market so to speak. And this is exactly why Converse is suing 31 companies for imitating their All Star design and violating their trademarks, including companies like Walmart, FILA, Sketchers and Ralph. Not only is Nike owned Converse seeking monetary damages but aims to get all so-called “knock-off” products off the shelves as soon as possible. They have also filed a separate complaint with the International Trade Commission.
The story of Converse All Star’s started way back in 1917, made initially as basketball shoes, and subsequently improved and marketed by basketball player Chuck Taylor. Soon it became recognized as a symbol of athleticism, worn by 90% or all NBA players and even used in army training. It also gained popularity by the actors and singers who wore it, including Kurt Cobain from Nirvana, Captain Hunnicutt from M*A*S*H, and even Wiz Khalifa. Although during the nineties we almost saw the end of Converse after they went bankrupt, thanks to Nike’s acquisition in 2003, the company saw a robust increase in popularity and sales. Since then the number of imitators has increased proportionally to their sales.
Since 2008, Converse has sent out 180 cease and desist letters for infringement upon their Converse Midsole Trademark, and the Converse Outsole Trademark. A number of companies have imitated the style and placement of the brand logo. Although All Stars have attained iconic status, the problem is that trademarks used in the fashion industry have not been favored by the courts. Recently though, Christian Louboutin won a trademark dispute against YSL for its signature red soles, which had obtained secondary status as symbolizing the brand. But the difference in the present case is that the rubber soles and topper were initially designed for basketball, which can be argued to be functional. And a trademark cannot be functional. The only purpose a trademark must serve is to identify a particular company’s goods and services. The placement of the logo is non-functional and easier to uphold but the rubber strip around the shoe and on the top serve a functional purpose and would have had a better chance under patent law.
Stay tuned as this case developments over the months. Remember, while filing trademarks and design patents make sure they are non-functional and only ornamental in nature, otherwise you will face problems down the line.
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