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Q&A with Sheryl Garko: Empowered by IP

May 17, 2017

Q&A with Sheryl Garko: Empowered by IP

May 17, 2017

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Intellectual property litigator Sheryl Koval Garko was interviewed by Metropolitan Corporate Counsel in the May 2017 article “Empowered by IP.” In the interview, Ms. Garko talks about the differences between litigating in the U.S. International Trade Commission (ITC) and district court, as well as her recent success for New Balance in an influential trademark case decided by the ITC. She also comments on the firm’s women’s initiative, EMPOWER, and how it has supported her career.

MCC: You helped win a closely watched ITC trademark case last year for New Balance that has upended trademark law and continues to be litigated in the courts on appeal. What is the story behind that case, and where do things stand now?

Garko: Converse sued 31 respondents claiming infringement of its purported trade dress in its Chuck Taylor sneakers – specifically its combination of a toe cap, toe bumper and midsole stripes. New Balance intervened in that action to protect its well-known PF Flyers brand, which has been around since the 1950s. The trial took place in August 2015 and a final determination was issued on June 23, 2016, which found in favor of New Balance. The ITC found that the claimed trademark asserted by Converse against New Balance was invalid – meaning Converse did not have trademark rights to the claimed design elements.

We were able to show that consumers did not think that the combination of the toe cap, toe bumper and midsole stripes on the Chuck Taylor were themselves source-identifying – meaning that the vast majority of consumers would not look at only those elements and understand that meant the shoe was a Converse sneaker. While Converse has sold a lot of Chucks and advertised them heavily, it has not directed its efforts to the particular design elements at issue. Additionally, we were able to demonstrate that many companies over the years sold sneakers with the same combination of elements, so consumers would not be led to understand that those elements are associated with a single source. I think this is an important lesson for companies that want to claim specific elements of their overall product design as trade dress. Simply advertising the product as a whole is not enough. You need to call consumers’ attention specifically to what you claim as your trademark.

This was a major victory for our client and other shoe companies and retailers involved in the case that asserted that Converse was trying to monopolize common sneaker designs. IPLaw360 identified the matter as the top trademark ruling of 2016, noting that the win “marked a big setback for Converse’s aggressive campaign to protect its Chuck Taylor sneaker.” The case is currently being briefed on appeal in the U.S. Court of Appeals for the Federal Circuit.”