907 F.3d 1361
Fed. Cir.2018Background
- Converse registered trade-dress design for Chuck Taylor All Star midsoles (’753 reg., issued Sept. 10, 2013) and also asserted earlier common-law rights dating back decades.
- Converse filed a § 337 complaint with the ITC alleging importation/sale of infringing shoes; many respondents defaulted, several intervenors (including Skechers, New Balance, HU Liquidation, Wal‑Mart) actively defended and began use before registration.
- ALJ found the registered mark valid and infringed (presuming secondary meaning from registration) but found no secondary meaning for the asserted common-law mark; parties sought review.
- The ITC reversed as to the registration’s validity, finding lack of secondary meaning, and concluded no § 337 violation overall though it held that if the marks were protectable some accused products would infringe.
- Federal Circuit vacated and remanded, holding the ITC applied incorrect standards on timing of secondary-meaning inquiry, weight of evidentiary factors (including surveys and third‑party uses), and substantial‑similarity for infringement; clarified applicable factors and presumptions.
Issues
| Issue | Plaintiff's Argument (Converse) | Defendant/Intervenors' Argument | Held |
|---|---|---|---|
| Relevant date for secondary meaning | Registration presumes secondary meaning at all relevant times | Presumption applies only from registration forward; for pre‑reg uses plaintiff must prove secondary meaning as of each first infringing use | Presumption of registration applies prospectively (from registration date) only; for pre‑registration infringers Converse must prove secondary meaning as of each infringer’s first use without presumption |
| Effect of registration on proceedings | Registration establishes validity/presumption that aids all infringement claims | Registration does not create mark and cannot prove secondary meaning for pre‑registration periods | Registration confers added protection but does not create the mark; presumption of validity/secondary meaning shifts burden only from registration date forward |
| Proper factors and temporal scope for secondary meaning | ITC’s multi‑factor approach is acceptable; long historical uses probative | Focus on recent use—especially five years before relevant date—and require substantial similarity for third‑party uses | Adopt six consolidated factors (survey linkage; length/degree/exclusivity of use; advertising; sales/customers; intentional copying; unsolicited media) and emphasize primary reliance on uses within five years of the relevant date; only substantially similar third‑party uses are probative |
| Standard for trade‑dress infringement | Likelihood of confusion analysis used by ITC is sufficient | Accused products lacking one or more trademark elements cannot infringe if not substantially similar | Accused products must be substantially similar to the asserted trade dress to find infringement; ITC should reassess accused products under that requirement |
Key Cases Cited
- Wal‑Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (product design trade dress requires secondary meaning)
- Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (inherently distinctive trade dress principles)
- Braun, Inc. v. Dynamics Corp. of Am., 975 F.2d 815 (Fed. Cir.) (secondary meaning must predate infringement)
- In re Int’l Flavors & Fragrances Inc., 183 F.3d 1361 (Fed. Cir.) (registration confers additional protections but does not create trademark)
- Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352 (Fed. Cir.) (presumption from registration shifts burden in validity challenges)
- Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir.) (substantial‑similarity standard in design contexts informs trade‑dress similarity analysis)