By David Taylor
Most attorneys, particularly those who do not regularly practice in the field of intellectual property, tend to associate trademark registration with word marks, such as Nike, Amazon, Exxon, Google, and Pepsi, to name a few. However, such a narrow view of registration can prove to be a disservice to clients. The U.S. Patent & Trademark Office (USPTO) does not limit federally registerable subject matter to words only. Trade dress, such as product-packaging trade dress and product-design trade dress, as well as other “non-conventional” source identifiers such as colors, scents or fragrances, and sounds, potentially constitute registerable subject matter.
The U.S. Court of Appeals for the Federal Circuit recently took up an appeal involving a product-design trade dress registration, specifically for Chuck Taylor All Star® shoes. Converse, Inc. v. Int’l Trade Comm’n, 2016-2497, — F.3d —, 2018 WL 6164571 (Fed. Cir. Oct. 30, 2018). Converse owns U.S. Trademark Registration No. 4,398,753 for the trade dress to the Chuck Taylor All Star shoes. Although Converse claims to have been using the trade dress since 1932, it apparently waited until 2012 to file a federal trademark application, which the USPTO issued as the ‘753 registration in 2013. The ‘753 registration includes the design reproduced below, together with a description of the mark as “consist[ing] of the design of the two stripes on the midsole of the shoe, the design of the toe cap, the design of the multi-layered toe bumper featuring diamonds and line patterns, and the relative position of these elements to each other”:
Converse filed a complaint in the International Trade Commission (ITC) alleging that more than 30 respondents violated Section 337 of the Tariff Act of 1930 for actions relating to importation of shoes that Converse alleged infringed the ‘753 registration and Converse’s common law rights in the trade dress. Some of those respondents were alleged to have started infringing Converse’s mark before the 2013 registration date, while others were alleged to have started after. By the time the case reached the Federal Circuit, only four respondents (who intervened in the Federal Circuit appeal) remained. Those respondents challenged the validity of Converse’s registration and mark.
All trademarks advance consumer protection by serving to indicate a product’s source. A mark can serve this function and thus be distinctive in one of two ways. First, a mark is inherently distinctive if its intrinsic nature serves to identify a particular source. Second, a mark can acquire distinctiveness if it develops “secondary meaning,” which occurs when the primary significance of the mark to the public is to identify the source of the product rather than the product itself. In Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 216 (2000), the U.S. Supreme Court held that product-design trade dress can never be inherently distinctive, but must acquire distinctiveness (or secondary meaning) through use. Thus, the validity of Converse’s trade dress turned on the issue of secondary meaning.
Converse’s common law rights and the ‘753 registration both cover the same mark in the form of its product-design trade dress. Federal registration affords a trademark owner additional rights not provided by common law. One such right is a presumption that a registered mark is valid, including that the mark has acquired secondary meaning (if not inherently distinctive). This presumption shifts the burden of persuasion and the initial burden of production to the party challenging the mark (here the respondents), requiring the challenger to rebut the presumption. In the case of common law rights, however, the burdens rested on Converse because there was no such presumption.
Because each of the remaining respondents had started their alleged infringement before the 2013 issuance date of Converse’s ‘753 registration, they argued that the presumption of validity of the ‘753 registration (conferred at the time of registration) did not apply. The Federal Circuit agreed, and vacated and remanded the case to the ITC, with instructions that Converse be required to establish secondary meaning before the first infringing use by each of the remaining respondents, without the benefit of the presumption afforded by the ‘753 registration.
The Federal Circuit’s decision serves as a reminder of the importance of not only identifying a client’s intellectual property, but also moving quickly to secure protection in it, whether that protection involves a federal trademark registration, a patent, or a copyright registration. One question that was not answered by the Federal Circuit’s opinion is why it took until 2012 to file a federal trademark application, given that Converse purported to have been using the underlying trade dress since 1932. Had Converse obtained its registration earlier, it may have benefitted from the presumption of validity, including secondary meaning, and likely would have achieved incontestable status and made any challenge to its registration more difficult.
David Taylor is a partner with the law firm of Berenato & White, LLC in its Bethesda office. The firm concentrates its practice in the area of intellectual property.