10 Apr Fila USA Settles Chuck Taylor Sneaker Trademark Fight
Fila USA Inc. has reached a settlement with Converse Inc. to settle trademark infringement claims, joining H&M, Ralph Lauren Corp. and other fashion brands. But Walmart filed a brief with the International Trade Commission vowing to “fight Converse’s anti-competitive actions to preserve Every Day Low Prices for Walmart customers.”
As reported, Converse in October sued 32 companies in Federal District Court in New York, accusing them of infringing on trademarks that cover the look of the Chuck Taylor shoe, including the distinctive toecap, toe bumper and side strip as well as the diamond pattern on the bottom of the sole. The Converse star is not in question.
The brand, owned by Nike Inc., is suing for monetary damages, but is particularly seeking to prevent the continued sale of the alleged infringing product. Converse claims look-alike Chuck Taylors have become more common in recent years with their popularity.
According to a joint motion to terminate the investigation filed with the U.S. International Trade Commission, Fila has agreed not to import or sell in the U.S. any footwear products that infringe the trademarks asserted against Fila, unless Converse consents or agrees to license them. The motion states that the settlement agreement between Converse and Fila “is fully effective and completely resolves the dispute in this investigation.”
Among vendors, H&M Hennes & Mauritz LP settled in February and Ralph Lauren reached an agreement in January. Brian Lichtenberg LLC, Tory Burch LLC, Gina Group LLC, Aldo Group and Bape have also reportedly settled claims in the last 30 days, according to ITC filings.
Converse claims look-alike Chuck Taylors have become more common in recent years with their popularity. It claims to have served about 180 cease and desist letters related to the issue since 2008.
It also said it has spent hundreds of millions advertising the shoes, while also acknowledging the iconic brand has benefited from extra publicity reaped from call outs in books, magazines, newspapers, movies and TV shows.
By contrast, Walmart wrote that Converse’s “sudden launch of this surprise ITC action against the industry and its use of this forum to extort monetary settlements and drive product out of the market must not continue to be permitted.”
Walmart also claims that “toe caps, toe bumpers and stripes are actually or aesthetically functional they are not subject to trademark protection.”
“Converse has not had exclusive use of the toe cap, toe bumper and midsole striping for at least 50 years, if ever,” the filing said. “Converse has been well aware of the use by other companies of these features.”
Others involved in the lawsuit include Skechers USA, K-Mart Corp., Zulily, Highline United and Kitson.