Addressing core issues of trademark law, including evidentiary presumptions afforded to registered trademarks and considerations in determining whether trademarks have acquired secondary meaning, the US Court of Appeals for the Federal Circuit issued an important opinion vacating and remanding a US International Trade Commission (ITC) decision concerning trade dress for sneakers. Converse, Inc. v. International Trade Comm’n, Case No. 16-2497 (Fed. Cir. Oct. 30, 2018) (Dyk, J) (O’Malley, concurring in part, dissenting in part).

Converse filed a complaint with the ITC against various respondents for importing shoes that purported to infringe its trade dress in its All Star shoes. The trade dress at issue was the “mid-sole” of Converse’s shoe, consisting of the striped design, toe cap and diamond pattern on the toe bumper, among other elements (All Star Trade Dress). Converse’s claimed first use of this trade dress dated back decades, but Converse did not apply to register the All Star Trade Dress until 2012 and did not secure its registration until 2013. Many of the accused infringers had imported the products at issue before Converse secured its registration.

The ITC administrative law judge (ALJ) determined that the “registered” All Star Trade Dress (i.e., from September 8, 2013, forward) was valid and had been infringed, relying on the evidentiary presumption of secondary meaning afforded to registered marks under 15 USC § 1115(a), but held that Converse had failed to establish that its “unregistered” All Star Trade Dress (i.e., prior to September 8, 2013) had acquired secondary meaning and thus was entitled to trade dress protection.

In its final determination, the ITC reversed the ALJ’s finding and held that the registered All Star Trade Dress was invalid because the mark had not acquired secondary meaning. The ITC agreed with the ALJ, however, that Converse had failed to prove secondary meaning in the unregistered All Star Trade Dress. Converse appealed.

The Federal Circuit found the ITC’s final determination flawed in several respects, including its parsing of “registered” and “unregistered” All Star Trade Dress. As the Court observed, the trade dress is the same, with different rights attaching at different times.

The Federal Circuit found that the ITC erred by failing to distinguish between those who had begun infringing use before the All Star Trade Dress was registered and those who began after the registration. The trademark owner claiming infringement must show that its mark had acquired secondary meaning before the alleged infringer began use. For infringement after a mark has registered, the trademark owner has the benefit of a presumption that its mark has acquired secondary meaning. However, there is no presumption of secondary meaning afforded to registered marks before registration. Thus, when claiming infringement that began before registration, the trademark owner bears the burden of proving that its mark had acquired secondary meaning before the alleged infringer’s first use. Because the ITC erred in this analysis, the Court remanded for a determination of whether the All Star Trade Dress had acquired secondary meaning before each of the alleged infringers had begun use.

The Federal Circuit also found that the ITC had applied the wrong legal standard in determining whether the All Star Trade Dress had acquired secondary meaning. Using a multi-factor test, the ITC found that the All Star Trade Dress had not acquired secondary meaning because Converse had not shown exclusive use of the trade dress and there was no survey evidence demonstrating that the public associated the All Star Trade Dress with Converse. In its review, the Court clarified that a proper secondary meaning assessment should consider six factors:

• Association of the trade dress with a particular source by actual purchasers (usually shown by customer surveys)

• Length, degree and exclusivity of use

• Amount and manner of advertising

• Amount of sales and number of customers

• Intentional copying

• Unsolicited media coverage of the product embodying the mark

The Federal Circuit explained that exclusivity should not be considered in isolation, but rather together with the trademark owner’s length and degree of use. The Court concluded that the ITC had erred in finding that Converse had not made exclusive use of the All Star Trade Dress. Per the Court, the ITC placed too much weight on uses significantly predating the infringing uses at issue, and relied on products that were not substantially similar to the All Star Trade Dress. The Court suggested that exclusivity of use should be evaluated in the five years preceding the first infringing use, and should only consider use that was “substantially similar” to the owner’s claimed trade dress.

The Federal Circuit also faulted the ITC for relying too heavily on the 2015 survey submitted in support of the alleged infringers, which showed that only approximately 20 percent of respondents associated the All Star Trade Dress with a single source. That survey is only relevant to the extent it measured whether the All Star Trade Dress had acquired secondary meaning prior to the beginning of each alleged infringing use. Some of the alleged infringing uses took place almost 10 years before the survey. The Court observed that surveys conducted within five years of the first infringing use may be relevant in assessing secondary meaning.

While Judge O’Malley agreed with the panel’s application of the evidentiary presumption afforded to registered marks, she criticized the expansiveness of its opinion. Judge O’Malley reasoned that a decision on the validity of the All Star Trade Dress registration was unnecessary to resolve this case because either (1) certain of the infringers in the proceeding had defaulted and thus never challenged the validity of Converse’s trade dress, or (2) all other infringers had commenced use before the All Star Trade Dress was registered, meaning that they could not be liable for the infringement of a registered mark. In O’Malley’s opinion, the only relevant question was whether Converse could establish acquired distinctiveness as of each first alleged infringing use.

Practice Note: This opinion has wide-ranging implications for trademark law. Under the reasoning of this opinion, in trademark or trade dress infringement litigation, the owner of a registered trademark does not have the benefit of any of the evidentiary presumptions of a registration where the infringer’s use commenced before that registration. Thus, for example, a plaintiff would need to prove that its trade dress was not functional if the alleged infringement occurred before plaintiff secured a registration.