Converse, Inc. v. Int'l Trade Comm'n
909 F.3d 1110
Fed. Cir.2018Background
- Converse owns a registered trade-dress mark (U.S. Reg. No. 4,398,753) for midsole/toe design of Chuck Taylor All Star shoes (registered Sept. 10, 2013) and also asserts earlier common-law rights.
- Converse sued multiple importers at the ITC under 19 U.S.C. § 1337 for importing shoes allegedly infringing that trade dress; several respondents defaulted and several (intervenors) actively defended, arguing lack of secondary meaning and no infringement.
- The ALJ found the registered mark valid/presumptively distinctive and found infringement; the ALJ found Converse had not shown secondary meaning for the asserted common-law claim as to intervenors.
- The ITC reversed the ALJ on validity, holding the registered mark had not acquired secondary meaning, and affirmed lack of secondary meaning for the common-law claim; the ITC nonetheless held that if the marks were protectable, some accused products would infringe.
- The Federal Circuit vacated and remanded, holding the ITC used incorrect standards on (1) timing and scope of the secondary-meaning presumption, (2) proper factors and temporal focus for secondary-meaning analysis, and (3) substantial-similarity requirement in likelihood-of-confusion analysis.
Issues
| Issue | Plaintiff's Argument (Converse) | Defendant/Intervenors' Argument | Held |
|---|---|---|---|
| Relevant date and effect of registration on secondary meaning | Registration creates a presumption of secondary meaning that applies to infringement generally | Presumption only applies prospectively from registration date; prior infringers require proof of secondary meaning at their first use | Presumption of validity/secondary meaning applies only as of registration date; for pre-registration infringers Converse must prove secondary meaning as of each infringer's first use without presumption |
| Proper factors and temporal focus for secondary-meaning inquiry | Long history of use (since 1932) and broad historical evidence supports secondary meaning | Focus on recent, substantially similar uses; surveys conducted long after first uses are weak evidence of historic perception | Adopted six-factor test (survey association; length/degree/exclusivity of use; advertising; sales/customers; deliberate copying; unsolicited media). Principal evidentiary focus should be the five years before the relevant date; older evidence only if shown to have affected consumer perception at the relevant time |
| Role and weight of surveys (Butler survey) | Butler survey (2015) supports association and is relevant to registration date | Survey is untimely for assessing pre-registration first uses and has limited probative value | Surveys are probative only to the extent they illuminate consumer perceptions at the relevant date; Butler survey has limited weight for pre-registration claims and may be considered for registration-date issues but is not dispositive |
| Standard for infringement / likelihood of confusion in trade-dress cases | Brand labeling and some shared elements show likelihood of confusion even when accused products lack one element | Products missing one or more claimed elements are not substantially similar and cannot infringe | Accused products not substantially similar to asserted trade dress cannot be found to infringe; the ITC must reassess whether accused items are substantially similar before applying likelihood-of-confusion factors |
Key Cases Cited
- Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000) (product-design trade dress cannot be inherently distinctive; secondary meaning required)
- Matal v. Tam, 137 S. Ct. 1744 (2017) (federal registration does not create trademarks; registration is evidence, not the source, of trademark rights)
- B & B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293 (2015) (federal determinations can have preclusive or evidentiary effects in later proceedings)
- Braun, Inc. v. Dynamics Corp. of Am., 975 F.2d 815 (Fed. Cir. 1992) (secondary meaning must exist before infringement began)
- Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352 (Fed. Cir. 2009) (registration presumption shifts production and persuasion burdens in cancellation/validity contexts)
- Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (substantial-similarity/ordinary-observer standard for design-based copying issues)