by Steve Jaconetta
New Balance is the latest footwear company to enter the courtroom.
The brand's lawyers filed court documents today that alledge that Converse (a subsidiary of Nike Inc.) recently went to the International Trade Commission seeking to assert trademarks on classic canvas shoes with rubber toes and other familiar features. As a result, friction between New Balance's PF Flyers and the Converse's Chuck Taylor All Star has risen.
The lawyers for New Balance are looking to protect their product from the trademark claim by Converse, and want the court to issue a "declaration of non-infringement."
In a statement to the court, New Balance reps wrote the following:
"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."
New Balance says it has sold more than $50 million of PF Flyers sneakers since acquiring the brand in 2001 and re-launching it in 2003. (Interesting sidenote: Converse once owned PF Flyers for a brief period in 1972.) The filing also states that the company's executives were surprised they couldn't resolve the matter with Converse counterparts without going to court stating: "Given their position in the athletic footwear industry, the parties have historically worked cooperatively to address business issues as they arise from time-to-time."
Converse did not respond immediately to New Balance's complaint.
Steve Jaconetta is the Release Dates & Archive Editor of Sole Collector and you can follow him on Twitter here.
