The International Trade Commission (ITC) issued a general exclusion order in the 936 Investigation on July 6, 2016, that bars importation of shoes infringing two Converse trademarks on a diamond-patterned “outsole” (or shoe bottom). But the ITC found invalid a third Converse trademark on a “midsole” design, reversing the Administrative Law Judge on that point.
The validity of Converse’s midsole trademark turned on whether it had acquired “secondary meaning.” For a trademark to have secondary meaning, consumers must believe that products having the trademark originate from a single source.
The ITC concluded that Converse’s midsole trademark had not acquired secondary meaning. The ITC gave substantial weight to consumer surveys showing that the trademark lacked secondary meaning. The ITC characterized consumer survey evidence as the most important factor in a secondary meaning assessment. The ITC also noted that since the 1920s, many companies had sold shoes with the same midsole design. That fact made it unlikely, in the ITC’s view, that consumers would think that shoes having the design all come from one source (i.e., Converse).
With respect to Converse’s outsole trademarks, the ITC confirmed that they were valid and infringed by a defaulting respondent. The ITC issued a general exclusion order, barring all importation of infringing shoes regardless of source, based on two findings. First, the ITC found that the defaulting respondent was likely to circumvent a limited exclusion order by using third-party intermediaries to import infringing shoes. Second, the ITC found that there was a widespread pattern of importation of infringing shoes by sources difficult to identify.
According to the ITC’s online statistics, trademark-infringement investigations have accounted for less than five percent of ITC investigations over the past decade. The ITC has instituted two trademark-infringement investigations so far in CY 2016.
Converse is appealing the ruling that its midsole trademark is invalid.