Seventy-Year-Old Converse Trademark Invalidated in Landmark ITC Decision

In one of the most hotly-litigated trademark cases ever decided by the International Trade Commission, Converse’s “midsole” trademark covered by U.S. Registration No. 4398753 has been found invalid. As shown below, Converse’s trademark covered (1) the design of two stripes on the shoe’s midsole, (2) the design of the toe cap, (3) the design of the multi-layered toe bumper featuring diamonds and line patterns, and (4) the relative position of these elements to each other:

Converse Trademark

Converse had sought a general exclusion order barring the importation of shoes bearing the above design, initially naming over 30 respondents. Most respondents settled, but Walmart, Skechers, Highline, and New Balance took the case to trial.

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Healthbox for VC Services Not Confusing to Healthbox for Connected Fitness Products

The U.S. District Court for the District of Delaware recently handed firm client Under Armour a major victory in a trademark infringement and dilution action filed by Chicago-based healthcare consulting firm Healthbox Global Partners, LLC (“HGP”). Healthbox Global Partners, LLC v. Under Armour, Inc., No. 1:16-cv-00146, (D. Del. July 19, 2016).

HGP filed suit alleging trademark infringement, unfair competition, state dilution, and deceptive trade practice claims against Under Armour in March 2016, just two months after Under Armour launched its new connected-fitness offering under the Healthbox Blog ImageHEALTHBOX/UA HEALTHBOX mark. HGP is a VC and consulting firm offering advisory, incubation, and funding for start-ups and existing businesses in the healthcare industry and the owner of a 2013 registration for HEALTHBOX covering such services. Under Armour, on the other hand, is a sports product company targeting athletes and fitness-minded consumers. It uses the Healthbox Blog ImageHEALTHBOX/UA HEALTHBOX mark to identify a box containing a “connected fitness system” with various devices designed to measure aspects of one’s health for sale directly from Under Armour and national retailers, including Best Buy, Dick’s Sporting Goods, and Target.

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Cruz for President Cannot Avoid Copyright Infringement and Breach of Contract Claims

In May of 2016, “Cruz for President” and its ad agency (together “Cruz”) were sued by a music downloading website and two artists (collectively “Leopona”) for breach of contract and copyright infringement. Cruz downloaded two songs from Leopona, “Lens” by Sarah Schachner and “Fear of Complacency” by Brad Couture. Leopona, Inc. v. Cruz for President, 2016 WL 3670596 (W.D. Wash. July 11, 2016).  Cruz agreed to a Small Business License agreement at the time of download. The license expressly  prohibited either song from use “for political purposes” and “in any broadcast.” Further, the license provided for a payment of $25,000 in liquidated damages for each breach. Cruz used the songs in two campaign ads, both of which were published on YouTube, accumulating thousands of views. The “Lens” ad was also broadcasted on Fox Business News 86 times. Continue reading

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