Converse and the Rubber-Toe Topper

Converse recently filed 22 lawsuits in the Eastern District of New York, accusing 31 companies of trademark infringement.  Converse is suing to protect core elements of its Chuck Taylor sneakers.  The instantly recognizable style is something that each one of us grew up with: white sole, black stripe and the white rubber toe topper that marks its unique style.  The design imbues the wearer with a cool rebellious image, a sense of freedom and timeless style.  Outside of the United States, and I know this from personal experience, the style feels inherently “American” in an effortless and athletic way. (I remember owning a pair when I was younger, and felt sporty-cool doing so, even though I was the least sporty pre-teen out there – and not that cool either, but I guess my feet were).

While Converse is suing for monetary damages in federal court, it has also filed a separate complaint with the international Trade Commission, in order to stop any shoes from entering the country.  Converse designed its first Chuck Taylor sneaker in 1917, and the sneakers peaked in popularity in the 1950s and 60s.  The company ultimately filed bankruptcy in the 1990s, but experienced a rebirth in 2003.

The issue with Converse’s lawsuit is whether its design is inherently functional and therefore does not benefit from trademark protection.  If the case goes forward (in other words it’s not dismissed or settled), it would be another “Louboutin” case in the making.  Maybe it doesn’t have the sex appeal of Louboutin’s provocative heels, but for attorneys, it does.

In the US, the functionality doctrine prevents a party from obtaining exclusive trade dress or trademark rights in the functional aspect of a product or its packaging.  It thus prevents trademark owners from inhibiting legitimate competition.  Aesthetic functionality arises when protection of a purported proprietary mark would “put competitors at a significant non-reputation related disadvantage.” TrafFix Devices Inc. v. Marketing Displays Inc., 532 U.S. 23, 58 USPQ2d 1001 (2001).  In practice, the doctrine finds application (1) when the asserted mark is denied protection because it does not actually identify the source of the products; or (b) when the mark is protected, but the defendant has not infringed it because it is using the mark aesthetically and not as a source identifier.   The doctrine is difficult to understand, and even more difficult to apply.  To make matters worse, the Supreme Court has provided little guidance on what constitutes a “significant disadvantage.”

If a product becomes particularly attractive to the public because of its design, does it place competitors at risk because the design has become an industry standard?  Rather than rewarding creativity, the doctrine seems to punish it.  This is all the more so in an industry, such as the fashion industry, that follows trends.  Perhaps the better way of looking at the doctrine is that it rewards longevity rather than an ephemeral trend that ultimately does not serve as a source identifier.  But what happens when the trend has longevity?  Can a timeless design be associated with a source, or does it place competitors at an inherent disadvantage? 

Which brings us back to the Converse case - the ultimate issue is whether the design (white side stripes, with black line) and rubber toe caps serve as source identifiers or whether they are functional in design.  Another red sole in the making, to the delight of TM attorneys like me.