One of the biggest trademark cases in 2018 addressed the issue of secondary meaning in product design—specifically, Converse’s rights in its signature Chuck Taylor® All Star® shoe. In Converse v. ITC, the Federal Circuit reversed a ruling by the International Trade Commission (ITC) that Converse’s registration was invalid and it did not own common law rights in the mark. The Federal Circuit held that the ITC had applied an incorrect standard in its ruling.

The holding remands the case and keeps Converse’s suit against its competitors—including Sketchers and New Balance—alive. For retailers, the ruling provides an important clarification on how courts will determine whether a claimed trade dress mark has acquired the required secondary meaning to make it enforceable. For secondary meaning to be established, the mark’s owner must prove that consumers associate the mark with a particular source of the goods or services

This is particularly important for design classics that have stood the test of time.

The look and feel of the Converse sneaker in question—commonly known as Chucks—hasn’t changed much since they were first unveiled in the 1930’s. But the company didn’t register its claimed trademark comprising the shoe’s iconic striped midsole and toe cap bumpers until 2013. The following year, Converse filed a complaint with the ITC, alleging that various competitors violated both common law and registered rights Converse owned in the trade dress of its sneakers. Importing of “knockoff” sneakers, Converse reasoned, violated the trade-and-tariff code.

The ITC held that despite Converse’s ownership of a federal trademark registration covering trade dress rights in the midsole design of its sneaker, the company had no protectable right in the midsole design of its Chuck Taylor® sneaker because the mark lacked secondary meaning.

A protectable mark must be distinctive and indicate the source of products or services to consumers. Marks that lack the requisite distinctiveness are difficult to protect and enforce. They are incapable of functioning as trademarks unless it can be shown that they have acquired distinctiveness or secondary meaning. Product design, like footwear, is never inherently distinctive, and secondary meaning must be established in order to have cognizable rights in the design as a trademark. In other words, consumers must be able to understand that the design is not merely aesthetic, but instead identifies the source of the good.  

The 2016 ITC ruling—which invalidated certain rights in the Chuck Taylor® sneaker—was a short-lived victory for footwear companies that, for many decades, have been manufacturing best-selling shoes featuring a midsole design  similar to the design of the Converse shoe. Converse appealed and, in November 2018, the Federal Circuit vacated and remanded the ITC decision.

The Federal Circuit held that secondary meaning is only presumed upon registration, and that six factors should be assessed in determining whether a mark has achieved secondary meaning. The court ruled that the following six factors must be weighed together in determining the existence of secondary meaning. 

• Association of the trade dress with a particular source by actual purchasers (typically measured 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.

On remand, the ITC must now apply the six-factor test, focusing on whether secondary meaning existed as of the date of the first infringement. The relevant time period in assessing secondary meaning is the five-year period before the first infringement, which would indicate whether prior third-party uses affected consumer perception of the trademark The ITC also must reassess the allegedly infringing products to determine whether they are substantially similar to Converse’s protected trade dress. The ITC’s decision is pending.