The American footwear maker Converse filed lawsuits Tuesday accusing more than 30 companies, including Wal-Mart, Kmart and Skechers, of trademark infringement on its nearly century-old Chuck Taylor shoe.
In U.S. District Court in New York, Converse, owned by Nike, is suing for monetary damages, which would be determined at trial. The company says its main goal, though, is to get impostors off store shelves.
And if Converse prevails in its complaint with the International Trade Commission, counterfeit Chuck Taylors could be stopped from entering the country.
“The goal really is to stop this action,” said Jim Calhoun, Converse’s chief executive. “I think we’re quite fortunate here to be in the possession of what we would consider to be an American icon.”
With its rubber-toe front and recognizable star, Converse started America’s business of brand-name logos on athletic wear when it introduced the first sneaker created for basketball players in 1917. The “All Star,” as it was called, acquired its contemporary appearance more than a decade later, after it was renamed for Chuck Taylor, a popular basketball player who joined the company as a spokesman in the early 1920s. All told, the company estimates that it has sold about a billion shoes with its midsole trademark worldwide.
In complaints filed with the International Trade Commission and in federal court, Converse claims that 31 retailers and manufacturers have infringed on one or more of its shoe’s trademark designs, including one or two black stripes and the so-called cap above the toe. The Converse star is not in question.
The company plans to file separate complaints for each company, said Terri Hines, vice president for global communications at Converse.
Converse, based in Andover, Mass., also says that it has written more than 160 cease-and-desist letters to companies it has accused of infringing on its designs.
“We continue to see sort of an explosion, if you will, an increase in knockoff activity,” Calhoun said. “Cease-and-desist letters aren’t enough.”
Trademark infringement, however, is notoriously difficult to prove in the fashion world. The law does not allow companies to protect aspects of their designs that are functional, and companies must also prove that consumers associate the specific design with the manufacturer, not just that a given design is popular.
“It can’t just be that consumers like your design. It can’t just be that your design is different or novel or interesting. It has to be that consumers associate the design with the source of the design,” said R. Polk Wagner, a professor of law at the University of Pennsylvania Law School who specializes in intellectual property. “The functionality limitation and the requirement that the design identify source makes it pretty difficult to win these cases.”