Using trade dress to stop infringement at the border. Converse v. ITC

Trademark law protects symbols that identify the source of a product. Trademark law is intended to protect consumers from being confused by products brands which look similar. If a company using a trademark and another company starts using a trademark which is confusingly similar the first company to use the mark can claim that their trademark is being infringed by the second company. Registering a trademark with the United States Patent and Trademark Office gives the owner of the trademark additional rights but even unregistered trademark are granted some protection under United States common law principles.

One of the rights that trademark registration gives a trademark owner is the right to have the United States Customs Service prevent others from importing goods bearing infringing marks. If the owner of a registered trademark learns that products bearing their trademark are being imported into the United States they can file a complaint with the United States International Trade Commission under section 337 of the Tariff Act of 1930. Section 337 prohibits the importation into the United States, the sale for importation, or the sale within the United States after importation by the owner, importer, or consignee, of products that infringe a valid and enforceable registered trademark.

A case which illustrates a trademark owner using section 337 to stop the importation of infringing products is CONVERSE, INC. v. UNITED STATES INTERNATIONAL TRADE COMMISSION, 2016-2497 (C.A.F.C. 2018). In this case Converse filed a complaint with the International Trade Commission alleging that several manufacturers were infringing on Converse’s registered trademark. Converse asked International Trade Commission to issue an order preventing the infringing products from being imported into the United States. Converse’s trademark related to the trade dress of Converse’s shoe products. The trademark consisted of the design of 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 named several companies in its International Trade Commission complaint and several of those companies responded to the complaint. The companies that responded to the complaint were called the interventors. The International Trade Commission sided with interventors because it found that Converse failed to demonstrate that its trademark had an acquired secondary meaning. Converse appealed the decision to the Court of Appeals for the Federal Circuit.

The Federal Circuit reversed the International Trade Commission’s decision and remanded the case for further review. The Federal Circuit held that the International Trade Commission had not applied the proper standards to determine trademark priority, secondary meaning, or likelihood of confusion.

In regard to trademark priority, the International Trade Commission made a distinction between infringement which happened before and after Converse registered its trademark. The Federal Circuit said this was an error because the to a trademark is a singular concept there is not a separate common law trademark and registered trademark.

In regard to secondary meaning, the Federal Circuit held that the International Trade Commission gave too much weight to evidence that showed that companies other than Converse used trademark more than 5 years before Converse registered the trademark. Exclusive use of a trademark is one of the factors to be evaluated when determining if a trademark has secondary meaning, but the time frame needs to be within five years of the date of registration. Also, the Federal Circuit held that a consumer survey needs to indicate a lack of consumer association of a trademark with a company, otherwise the consumer survey is neutral to a secondary meaning analysis.

In respect to likelihood of confusion the Federal Circuit held that the International Trade Commission must determine if the trade dress of the allegedly infringing products are substantially similar to the trademark in question before determining if there is infringement. If the trade dress of the allegedly infringing products are not substantially similar than the analysis of trademark infringement stops there.

The Federal Circuit remanded the case back to the International Trade Commission to reevaluate the case with this guidance.

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