[embedyt]http://www.youtube.com/watch?v=425GpjTSlS4[/embedyt]Marquel, TPVs NYTimes sneaker section correspondent, was trying on a pair of slippers, when he read Converse Sues to Protect Its Chuck Taylor All Stars. The footwear maker is filing trademark infringement lawsuits against 31 retailers, including Walmart, Kmart and Skechers, to protect core design elements. Marquel noticed that Converse is claiming as a trademark, the rubber toe guard piece. Marquel wondered how that could be a trademark. It seems like a functional part of the shoe, not some decorative device that performs no function. If Marquel knows anything in life, just one little legal fact, it’s that a trademark is not allowed to have any functional utility.
Marquel went to the Converse company to discuss this.
The Converse man said, “this is our intellectual property. We have millions invested in it.”
“But you know, Mr Converse man” I said, “that there are rules governing trademark, and how much you’ve spent doesn’t make it a trademark. Look at Kleenex, millions spent, no trademark. Thermos, millions, no trademark. Monopoly, millions, no trademark. Singer sewing machine. Millions. no trademark. Now give me a better, legal reason why only you can put toe guards on sneakers.”
“As I said these trademarks are our intellectual property. They allow consumers to make informed decisions about what to buy.” He said.
“Well that does sound more important than how rich you are. You’re saying that a person sees a toeguard, and it says to him, ‘Converse’. So they know to buy it if they want Converse?” I asked.
“Almost. The courts have recognized that consumers don’t always know the company name, so as long as they recognize that it’s a different company from other shoes and it’s the one they want, then it’s a good trademark.” He said.
“So if a customer doesn’t like Keds, and sees the toeguards, and knows that’s the one he wants, it doesn’t matter that he knows they’re called Keds or Converse?”
“Exactly. An anonymous source is fine as long as the trademark distinguishes it from other sources.” Said Mr. Converse.
“But trademarks can’t be functional. Those toeguards protect the toes. From scuffing and such. It also gives traction in basketball and other sports, when your up on a toe. Functional items can’t be trademarks.” I opined.
“Who told you that?” He asked.
“I just happen to know it. I come from an old trademark family. My father, and his father before him, and ten or so generations before them, have always been trademark people. In 1282, my great great ancestor actually invented the first trademark. So you’re talking to the source. And you know the prime function of a trademark is to identify source.” I said.
“Well you may know trademark but you don’t know sneakers. Those toeguards have no function except as a trademark.”
“Do your customers know that? Most of them think it’s part of the function, not just a silly decoration. Haven’t you led them to believe that it has a function, which makes them better?” I asked.
“Prove it,” he said.
“Well, before I do that let’s just backtrack. You insist that the toeguards distinguishes Converse from other sneakers so that a customer could avoid choosing what they don’t want by choosing the Converse, which in many cases they do want, right?”
“Absolutely. Like Keds.” He asserted.
“How about someone who doesn’t want a Nike. Hates the swoosh mark on the side, hates the use of underpaid foreign workers, instead buys a Converse. Has the trademark any utility in that decision?” I asked.
“Of course. He bought the shoe with the toeguards.”
“To avoid the Nike, right?” I asked.
“Absolutely.”
“No he didn’t,” I insisted. “No no no! He’s bought a Nike because Converse is made by Nike! You’ve deceived him using a deceptive trademark! Grounds for trademark cancellation.”
“You’re nuts,” he said.
“No, you’re dishonest. A trademark crook. Nike owns Converse lock stock and barrel. That means Converses are actually Nikes.”
He sputtered and we went out into the showroom. A little eight year old girl was immersed in a pile of Converses. I asked her name.
“Eden.” She mumbled.
“Looking for Converses?” I asked.
“Yup,” said Eden.
“How come?” I asked.
“They’re the best.” She said.
“What makes them so good?” I asked
She pointed to the toeguard.
“Makes it better?” I asked.
She shook her head.
“Wouldn’t you rather have some nice new Nikes?” I asked.
“Yuk.”
“What if I told you Converses are really just Nikes?” I asked.
“Yeah right,” said Eden.
“I’m serious, it’s true.” I said.
“Shut yo mouth. Shut yo mouth! Shut yo mouth!!”
I turned to Mr Converse. “You see? Both functional and deceptive. No trademark there.” I said.
Mr Converse protested, “maybe in 1282, but not in 2014, Marquel. By the way, what was that first trademark for?”
“Toeguards. Just toeguards.”
“He sold shoes?” Asked Mr Converse.
“No, just toeguards. People couldn’t afford shoes in 1282. They just wore toeguards, and we sold them.”
I went home to seethe over my family’s lost fortune.
***
BY MARQUEL: Please Mr. Converse Look & See
[embedyt]http://www.youtube.com/watch?v=N8BPcNUQy-0[/embedyt]
Loved your Mr. Converse interview. You’re the best, M! I love you.
Perfect pitch
ditto
ditto2
Loved this:
“As I said these trademarks are our intellectual property. They allow consumers to make informed decisions about what to buy.” He said.
“Well that does sound more important than how rich you are. You’re saying that a person sees a toeguard, and it says to him, ‘Converse’. So they know to buy it if they want Converse?”
I did not know Converse were made by Nike. Thanks for explaining.
I did not know what a deceptive trademark was. THANKS. I do learn a lot from you, Marquel
So, now I have to avoid Converse too? Nike is one of the few brands I bother to try to avoid, thanks TPV for doubling that crushing limitation (and thanks Doonsbury for ruining Nike in the first place)
Liked: People couldn’t afford shoes in 1282. They just wore toeguards