On October 14, 2014, Converse Inc. of North Andover, Massachusetts ("Converse") filed a complaint requesting that the ITC commence an investigation pursuant to Section 337. Due to its size, we have broken the complaint into part 1, part 2, part 3, part 4, part 5, part 6, and part 7.
The complaint alleges that the following entities (collectively, the "Proposed Respondents") unlawfully import into the U.S., sell for importation, and/or sell within the U.S. after importation certain footwear products that violate registered and common law trademarks used in connection with certain Converse shoes (collectively, the "asserted trademarks"):
- Skechers U.S.A., Inc. of Manhattan Beach, California
- Wal-Mart Stores, Inc. of Bentonville, Arkansas
- A-List, Inc., d/b/a Kitson of Los Angeles, California
- Aldo Group of Canada
- Brian Lichtenberg, LLC of Los Angeles, California
- Cmerit USA, Inc., d/b/a Gotta Flurt of Chino, California
- Dioniso SRL of Italy
- Edamame Kids, Inc. of Canada
- Esquire Footwear, LLC of New York, New York
- FILA U.S.A., Inc. of Sparks, Maryland
- Fortune Dynamic, Inc. of City of Industry, California
- Gina Group, LLC of New York, New York
- H&M Hennes & Mauritz LP of New York, New York
- Highline United LLC d/b/a Ash Footwear USA of New York, New York
- Hitch Enterprises Pty Ltd d/b/a Skeanie of Australia
- Iconix Brand Group, Inc. d/b/a Ed Hardy of New York, New York
- Kmart Corp. of Hoffman Estates, Illinois
- Mamiye Imports LLC d/b/a Lilly of New York
- Nowhere Co., Ltd. d/b/a Bape of Japan
- OPPO Original Corp. of City of Industry, California
- Orange Clubwear, Inc. d/b/a Demonia Deviant of Westminster, California
- Ositos Shoes, Inc. d/b/a Collection'O of South El Monte, California
- PW Shoes Inc. of Maspeth, New York
- Ralph Lauren Corp. of New York, New York
- Shenzhen Foreversun Industrial Co., Ltd. (a/k/a Shenzhen Foreversun Shoes Co., Ltd.) of China
- Shoe Shox of Seattle, Washington
- Tory Burch LLC of New York, New York
- Zulily, Inc. of Seattle, Washington
- Fujian Xinya I&E Trading Co. Ltd. of China
- Zhejiang Ouhai International Trade Co. Ltd. of China
- Wenzhou Cereals Oils & Foodstuffs Foreign Trade Co. Ltd. of China
According to the complaint, the asserted trademarks are used in connection with Converse shoes. In particular, the asserted trademarks include two distinct designs: a shoe midsole design and a shoe outsole design. The trademarked midsole design is made up of a toe bumper and a toe cap, plus an upper stripe and/or a lower stripe. The trademarked outsole design includes a distinct diamond pattern.
In the complaint, Converse states that the Proposed Respondents import and sell products that violate the asserted trademarks. The complaint specifically refers to various footwear products associated with the Proposed Respondents.
Regarding domestic industry, Converse states that the asserted trademarks appear on Converse shoes sold in the U.S. Converse states that it has established and maintains a robust domestic industry relating to Converse shoes based on its critical design, production-related, and support activities, and its significant and substantial investments in plant and equipment, employment of labor and capital, and investments in the exploitation of the asserted trademarks in the U.S. Converse specifically refers to its headquarters facility in North Andover, Massachusetts. Converse also states that the unlawful importation and sale of the accused products has the threat or effect of causing substantial injury to the Converse domestic industry.
As to related litigation, Converse states that it has enforced the asserted trademarks against numerous infringers, including in various U.S. district courts across the country. Converse further states that, contemporaneously with the filing of the instant ITC complaint, Converse is filing parallel district court actions in the U.S. District Court for the Eastern District of New York against each of the Proposed Respondents alleging trademark infringement, false designation of origin, unfair competition, and trademark dilution based on the asserted trademarks.
With respect to potential remedy, Converse requests that the Commission issue a general exclusion order, a limited exclusion order, and a permanent cease and desist order directed at the Proposed Respondents. Converse states that a general exclusion order is necessary and appropriate to prevent circumvention of a limited exclusion order and/or to remedy a pattern of violation of Section 337.