The ITC recently agreed to investigate more than 30 retailers and manufacturers, after Converse, Inc. filed a complaint against them for trademark infringement. The crux of Converse’s claim is that defendants have infringed on its midsole trademark design which is made of a rubber toe cap and stripe typically associated with its “All Star” sneakers. The sneakers were introduced in 1917 and renamed “Chuck Taylor” after a Converse salesman and basketball player. Converse, which is owned by Nike Inc., also filed separate lawsuits in the Federal District Court for the Eastern District of New York against the same companies.
Before the ITC, Converse is seeking that the ITC impose a “general exclusion order” directing Customs and Border Protection (CBP) to stop allegedly infringing products from entering the United States. According to Converse, it has been struggling with knock offs since 2006, and the company has to date apparently spent over $1 million monitoring counterfeits.
While brands often combine an ITC proceeding with a district court proceeding, the two are quite different in nature. In an ITC proceeding, public policy advocacy is of primary importance as commissioners consider whether the relief requested is in the public interest. Counsel before the ITC must therefore address public policy and competition issues, and be prepared to work with CBP. Moreover, the President can reject an ITC exclusion order for policy reasons.
These are significant differences when compared to a traditional trademark infringement lawsuit filed in federal court. While trademark law has public policy in mind by preventing consumer confusion, the parties are ultimately arguing solely against each other within the confines of the Lanham Act.
In Converse’s ITC proceeding, the administrative law judge assigned to this matter will issue an initial determination on whether there has been a violation of the statute. The Commission may then review and adopt, modify, or reverse the initial determination, or may decide to not even review it. If the Commission declines to review the initial determination, the initial determination becomes the final determination of the Commission.