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New Balance sues Converse over trademark actions

Converse’s iconic high-top Chuck Taylor.
Converse’s iconic high-top Chuck Taylor.(The Boston Globe - design)

If the holiday season is really a time to be kind and generous, no one told Massachusetts-based sneaker rivals New Balance and Converse.

New Balance Athletic Shoe Inc., of Brighton, filed a federal lawsuit Tuesday, decrying North Andover-based Converse Inc.'s "aggressive efforts" to protect its Chuck Taylor All-Star sneakers from imitators.

In October, Converse sued Walmart, Kmart, Sketchers, and dozens of other retailers for allegedly making knock-offs of its iconic Chuck Taylor design, which dates to the 1940s and features a distinctive rubber toe cap and striped midsole. Converse, which has been owned by Nike Inc. since 2003, was awarded a trademark on the shoe in 2013.

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Now, New Balance wants the US District Court in Massachusetts to cancel Converse's trademark. It said the description of the trademark includes common ornamental or functional features that are not unique to Chuck Taylor sneakers and could be applied to any number of shoes, including its own PF Flyers.

In its lawsuit, New Balance insists "Chucks" and Flyers are different enough that consumers are unlikely to confuse the two. The company also noted that like Chuck Taylor sneakers, the PF Flyers brand dates from the 1940s and was even briefly owned by Converse in the 1970s.

Although New Balance was not among the companies sued in the fall by Converse, the sneaker-maker said it called its competitor to make certain that PF Flyers would be excluded from the rash of lawsuits. Instead of offering reassurances, New Balance said, Converse threatened to add New Balance to the list of alleged infringers it submitted to the International Trade Commission.

In a statement Wednesday, Converse defended its practices and struck a defiant tone.

"Converse brought its case to the International Trade Commission to prevent consumer confusion, to protect its legitimate intellectual property rights, and to stop the sale of knockoff Chucks, all of which remain unchanged," the statement said. "We are committed to protecting our rights and will respond to [New Balance's] filing accordingly."

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In October, Converse's president and chief executive, Jim Calhoun, said his company had obtained the 2013 trademark on Chuck Taylors after a flurry of cease-and-desist letters failed to prevent copycat shoes from hitting the market.

"As our product has become more and more popular, some people have chosen to ignore our common law rights and registered trademark rights to capitalize on our brand," Calhoun said at the time. "The overall goal is to stop the infringements from happening."

The "All-Star" debuted in 1917 as a basketball shoe and was later renamed for a charismatic Converse salesman, Chuck Taylor, who crisscrossed the country hawking the shoes to players and coaches. While other more advanced sneakers have long since replaced Chucks on the basketball court, it remains a popular casual shoe, selling more than a billion pairs since its debut.


Dan Adams can be reached at dadams@globe.com. Follow him on Twitter @DanielAdams86. Globe correspondent Taryn Luna contributed to this report.