Trademark and Trade Dress Protection at the USITC

Apparel companies use a variety of methods to protect the designs of their products. Often, trademark and trade dress registrations are used to protect the apparel design of a company’s product from duplication by third parties without permission. Recently, however, there has been a trend by courts toward limiting the scope of trademark and trade dress protection for apparel products.

This trend was exemplified in a recent U.S. International Trade Commission (USITC) decision. The decision addressed a complaint filed by Converse in which Converse alleged that a number of retailers and manufacturers had infringed a series of its trademarks related to its Chuck Taylor All Star Shoes. The most notable part of the USITC’s decision related to Converse’s registered trademark covering the entire visual profile of the Chuck Taylor shoe from a top and side view of the shoe. The USITC concluded that this trademark was invalid, relying heavily on consumer surveys indicating that consumers did not associate the particular trademark with Converse. The USITC also determined that (1) numerous third parties had used the trademark design; (2) these third parties had been using the trademark design for over 80 years; and (3) the third parties had used the trademark for the same goods.

The USITC decision regarding Converse’s trademark is indicative of the movement away from protection for expansive trademarks. The broader the protection one seeks from a trademark, the more likely a court will find the trademark unenforceable. Because of this, businesses seeking legal protection for their designs through trademark and/or trade dress registration should be mindful of the proper way to go about seeking that protection.

If businesses wish to maintain trademarks with broad coverage, they must be sure to vigorously protect their trademarks. Allowing unfettered use of the trademarks will very possibly lead to an outcome similar to the USITC’s decision in the Converse case, whereby the design loses its affiliation with the company holding the trademark. Companies wishing to use broad trademarks for protection of their apparel design must be mindful of this, and be very proactive in pursuing third parties who may be infringing. Alternatively, businesses may use a series of narrower trademark and/or trade dress registrations to limit the risk of a court finding that the trademarks are generic and unenforceable.

In light of the USITC’s ruling in the Converse case, companies must evaluate their methods for protecting their apparel designs to determine if their strategy remains effective. Failure to do so could lead to the loss of trademark protection.

For more information about properly protecting your designs through trademark and/or trade dress registrations, contact Tori Kluess or another member of the Intellectual Property Team at the Law Firm of Conway, Olejniczak & Jerry, S.C.

Written By:
Attorney Tori L. Kluess