Fashion Law Series – Part I: These Shoes’ Trademarks are Made for Enforcing

Christian Louboutin. Charles Philip Pozzi. Chanel. Each of these fashion retail powerhouses has taken advantage of intellectual property law, particularly trademarks, in an attempt to protect their brand and their SHOES. Selling shoes in an industry that is worth billions of dollars, a growing number of fashion companies are exploring how to use intellectual property law to dominate the fashion industry. In 2014, Converse jumped on the trademark enforcement bandwagon in an attempt to revive its brand and protect the iconic Chuck Taylor and All Star sneakers. Converse filed lawsuits against a whopping 31 retailers and manufacturers, including Skechers, H&M, and Ralph Lauren, to name a few, alleging that these retailers infringed upon its trademark registrations for the Chuck Taylor sneakers. In November 2015, the International Trademark Commission (ITC) issued an Initial Determination finding that some of the accused infringers’ shoes did not infringe upon Converse’s trademarks, while other accused infringers’ shoes were likely to be confused with Converse’s trademarks. In particular, U.S. Trademark Registration No. 4,398,753 was included in the lawsuits and is directed to the midsole and toe cap of the Chuck Taylor sneaker. Several of the accused infringers settled out of court with Converse.

While the Chuck Taylor trademark saga has come to an end, Converse has not stopped there! This year, Nike (who owns Converse) filed a 14-page lawsuit alleging that Skechers’ shoe designs infringe upon shoe trademarks assigned to Nike. Nike is not the only well-known retailer in court this year. Similarly, fashion retailer Diesel accused companies of trademark counterfeiting, trademark infringement, and violating the federal anti-cybersquatting Consumer Protection Act, in which a New York Court awarded Diesel $2 million in damages in January 2016.

So, how are these shoes’ trademarks made for enforcing? Fashion retailers have realized the benefit of seeking trademark protection for not only the words included in their name or brand, but also for protecting distinctive features of their products (e.g., Christian Louboutin’s red lacquered shoe bottoms and Converse’s Chuck Taylor midsole and toe cap).

Sources: https://fashionunited.uk/news/business/diesel-wins-lawsuit-against-cybersquatters-and-is-awarded-2-million-us-dollars/2016012019109 http://koin.com/2016/01/06/nike-sues-skechers-in-trademark-fight/ Footwear Products, USITC, Inv. Nos. 337-TA-936 (Nov. 2015).

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For more information on this topic, please visit our Trademark Protection service page, which is part of our Trademark practice.

Klemchuk LLP is an Intellectual Property (IP), Technology, Internet, and Business law firm located in Dallas, TX.  The firm offers comprehensive legal services including litigation and enforcement of all forms of IP as well as registration and licensing of patents, trademarks, trade dress, and copyrights.  The firm also provides a wide range of technology, Internet, e-commerce, and business services including business planning, formation, and financing, mergers and acquisitions, business litigation, data privacy, and domain name dispute resolution.Additional information about the IP law firm and its IP law attorneys may be found at www.klemchuk.com.

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