New Balance is going to court to seek a “declaration of non-infringement” from Converse.
Last year Converse filed a complaint with the International Trade Commission to protect its iconic Chuck Taylor All-Star from copycats. PF Flyers, the canvas (and leather) sneaker brand New Balance purchased in 2001, was among the 31 complaints Converse named in its court case. New Balance said it unsuccessfully tried to reach a settlement with Nike-owned Converse.
New Balance representatives said Converse’s trademark claim oversteps reasonable boundaries. In a filing, New Balance lawyers wrote:
“A fair reading of (a recent Converse International Trade Commission) complain…reveals that Converse asserts trademark rights that, if upheld by the Commission, may improperly affect PF Flyers’ ability to compete with Converse. Equally as troubling, Converse’s ITC complaint seeks a “general exclusion order” that purports to target the named respondents, but is broadly written so as to also potentially exclude long-time legitimate competitors, such as PF Flyers.
“Given the parties’ mutual standing in the athletic footwear industry and the absence of any consumer confusion between their products, New Balance reached out to Converse in an attempt to clarify and memorialize the scope of Converse’s enforcement actions as excluding PF Flyers. New Balance’s concerns with the scope of Converse’s enforcement actions were apparently well-founded. Not only did Converse refuse to carve out PF Flyers, but it threatened to amend the ITC Action to add New Balance as a respondent and to otherwise seek to enjoin the sale of PF Flyers products. Subsequent efforts to avoid this dispute have been unsuccessful.”