Product Trade Dress After Converse: Secondary Meaning and Infringement Redefined

Description

On Oct. 30, 2018, in Converse Inc. v. Int'l Trade Comm'n, the Federal Circuit vacated the ITC's determination that Converse's registered mark was invalid and that Converse could not establish common law trademark rights. The court held the ITC applied the wrong standard in both its invalidity and infringement determinations.

A central issue was whether the mark had acquired secondary meaning. The Federal Circuit clarified the factors to assess in determining whether the branded product obtained secondary meaning. The court held the considerations are "(1) association of the trade dress with a particular source by actual purchasers (typically measured by customer surveys); (2) length, degree and exclusivity of use; (3) amount and manner of advertising; (4) amount of sales and number of customers; (5) intentional copying; and (6) unsolicited media coverage of the product embodying the mark." The court noted that "[a]ll six factors are to be weighed together in determining the existence of secondary meaning."

The Federal Circuit also found the ITC erred in its approach to trade dress infringement. The court found that the secondary designs must be substantially similar to the protected trade dress in the eyes of an ordinary observer to be infringing.

Listen as our authoritative panel discusses the Converse case and the court's new test for secondary meaning. The panel will also address the timing of infringement and the likelihood of confusion test. The panel will offer best practices for product owners to get and maintain IP protection.