PUBLIC VERSION

3. Defaulting Respondents .......................................................................... 101 

E. Remedy, the Public Interest, and Bonding.......................................................... 112 
1. Remedy ................................................................................................... 112 
2. Public Interest ......................................................................................... 121 
3. Bonding ................................................................................................... 123 
V. CONCLUSION ............................................................................................................... 124 

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 PUBLIC VERSION

I. INTRODUCTION

On October 30, 2018, the United States Court of Appeals for the Federal Circuit

remanded this investigation to the United States International Trade Commission for further

proceedings consistent with the Court’s opinion in Converse, Inc. v. International Trade

Commission, 909 F.3d 1110 (Fed. Cir. 2018). On remand, the Commission has found a violation

of section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337, by two defaulting

respondents with respect to Converse Inc.’s (“Converse”) trademark in the midsole design of its

Chuck Taylor All Star shoes, registered in U.S. Trademark Registration No. 4,398,753 (“the ’753

trademark”). Converse’s trademark is also referred to herein as the “Converse Midsole

Trademark” or “CMT.” The Commission has also determined that there has been no violation

with respect to Converse’s trademark rights as to the CMT by respondents Skechers U.S.A., Inc.

(“Skechers”) of Manhattan Beach, California; Highline United LLC d/b/a Ash Footwear USA

(“Highline”), now of Hyde Park, Massachusetts; and New Balance Athletic Shoe, Inc. (“New

Balance”) of Boston, Massachusetts (collectively, the “Active Respondents”). Although

Converse has established that its CMT had acquired secondary meaning prior to each Active

Respondents’ alleged first use of the CMT (which predate registration of the mark), Converse

has failed to show either a likelihood of confusion or injury to its domestic industry, or both,

with respect to those respondents’ accused shoes.

After considering the public interest, the Commission has determined to: (1) issue a

general exclusion order (“GEO”) directed to footwear products that infringe the ’753 trademark;

(2) issue cease and desist orders (“CDOs”) directed to the two defaulting respondents found in

violation; and (3) set the bond during the period of Presidential review in the amount of one

hundred percent (100%) of the entered value (per pair) of infringing articles. This opinion sets

1 
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Administrative Law Judge at 2 (Apr. 9, 2019) (“Remand Order”). The Commission ordered the

parties and the ALJ to complete the remand proceeding on the current evidentiary record, except

that the ALJ was authorized to reopen the record, and permit appropriate discovery, as necessary,

to comply with the Court’s decision. Remand Order at 3. Thereafter, the ALJ requested

Converse, the Active Respondents, and the Office of Unfair Import Investigations (“OUII”),

which is also participating in this investigation, to explain whether the record needed to be

reopened for additional discovery. Notice to the Parties (May 6, 2019). In response, the parties

agreed that the record was sufficient to adjudicate the issues on remand and that there was no

need to reopen the record. See Order No. 168 (May 23, 2019). After considering the parties’

views, the ALJ declined to reopen discovery and ordered that the remand proceeding would be

conducted on the existing evidentiary record. Id.

On July 17, 2019, Converse and the Active Respondents each filed an initial brief

regarding the issues on remand.2 On July 31, 2019, OUII filed its initial brief regarding the

issues on remand.3 On August 9, 2019, Converse and the Active Respondents each filed a reply

brief.4

On October 9, 2019, the ALJ issued his remand initial determination (“RID”) (Order No.

174) finding that the Active Respondents—Skechers, Highline, and New Balance—did not

violate section 337. The RID found, however, that the defaulting respondents—Dioniso SRL

2
Complainant Converse Inc.’s Opening Brief on Remand (July 17, 2019) (“Comp. Br.”);
Respondents’ Opening Brief on Remand from the Federal Circuit (July 17, 2019) (“Resp. Br.”).
3
Commission Investigative Staff’s Brief Regarding the Issues on Remand (July 31, 2019)
(“OUII Br.”).
4
Complainant Converse Inc.’s Reply Brief on Remand (Aug. 9, 2019) (“Comp. Reply Br.”);
Respondents’ Reply Brief on Remand from the Federal Circuit (Aug. 9, 2019) (“Resp. Reply
Br.”).
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requesting review of the RID.5 On October 30, 2019, each of these parties filed responses to the

other petitions for review.6

On February 7, 2020, the Commission determined to review the RID in part. See 85 Fed.

Reg. 8322-24 (Feb. 13, 2020) (“Notice of Review”). Specifically, the Commission determined

to review infringement, validity, and injury to the domestic industry with regard to the common

law trademark rights. Id. at 8322-23. The Commission also determined to review infringement

and validity as to the federally registered trademark rights. Id. The Commission requested

briefing from Converse, the Active Respondents, and OUII on the issues under review and on

remedy, public interest, and bonding. Id. at 8322-24.

On February 28, 2020, Converse, the Active Respondents, and OUII each filed opening

submissions.7 On March 9, 2020, each of these parties filed reply submissions.8

5
See Complainant Converse Inc.’s Petition for Review of the Remand Initial Determination
(Oct. 22, 2019) (“Comp. Pet.”); Respondents’ Petition for Review of Remand Initial
Determination (Oct. 22, 2019) (“Resp. Pet.”); Petition of the Office of Unfair Import
Investigations for Review-In-Part of the Remand Initial Determination (Oct. 22, 2019).
6
See Complainant Converse Inc.’s Response to the Respondents’ and Staff’s Petitions for
Review of the Remand Initial Determination (Oct. 30, 2019); Respondents’ Reply to Converse’s
Petition for Review of Remand Initial Determination (Oct. 30, 2019); Combined Response of the
Office of Unfair Import Investigations to the Private Parties’ Petitions for Review of the Remand
Initial Determination (Oct. 30, 2019).
7
See Complainant Converse Inc’s Written Submission on the Issues Under Review (Feb. 28,
2020) (“Comp. Sub.”); Complainant’s Submission on Remedy, Bonding, & Public Interest (Feb.
28, 2020) (“Comp. Rmdy”); Respondents’ Responses to the Commission’s Questions on
Remand (Feb. 28, 2020) (“Resp. Sub.”); Respondents’ Submission in Response to Commission’s
Request for Written Submissions on the Issues of Remedy, Public Interest and Bond (Feb. 28,
2020) (“Resp. Rmdy”); Response of the Office of Unfair Import Investigations to the
Commission’s Request for Written Submissions Regarding the Issues Under Review and
Remedy, Bonding, and the Public Interest (Feb. 28, 2020) (“OUII Sub.”).
8
See Complainant Converse Inc’s Reply Submission on the Issues Under Review (Mar. 9, 2020)
(“Comp. Reply”); Complainant’s Reply to Respondents’ Submission in Response to the
Commission’s Request for Written Submissions on the Issues of Remedy, Public Interest and

5 
 PUBLIC VERSION

Converse’s claims as to its federally registered trademark rights. Lastly, the Commission

opinion discusses remedy, the public interest, and bonding during the Presidential review period.

A. Converse’s Common Law Trademark Claims

Converse alleges that the Active Respondents’ accused shoes infringe its CMT and

acknowledges that the first alleged use for each Active Respondent occurred prior to its

registration of the mark. Comp. Sub. at 3-4. This means that Converse must establish the

existence of common law trademark rights in its CMT prior to such alleged first use by each

Active Respondent. See Converse, 909 F.3d at 1116-17. To do this, Converse must first prove

that it owns “a valid and legally protectable mark.” Id. (quoting Erbe Eletromedizin GmbH v.

Canady Tech. LLC, 629 F.3d 1278, 1287 (Fed. Cir. 2020)). To show that the CMT is valid and

legally protectable, the asserted mark must be (a) non-functional and (b) distinctive of a

product’s source. 15 U.S.C. § 1125(a)(3); see Wal-Mart Stores, Inc. v. Samara Brothers, Inc.,

529 U.S. 205, 210-11 (2000). The Federal Circuit affirmed the Commission’s finding that the

CMT is non-functional, so the remaining issue is distinctiveness of the mark. Converse, 909

F.3d at 1124.

Distinctiveness of a mark can be proven in one of two ways. “First, a mark is inherently

distinctive if ‘[its] intrinsic nature serves to identify a particular source.’” Id. at 1116 (quoting

Wal-Mart, 529 U.S. at 210) (alteration in original). Second, the mark can acquire distinctiveness

through secondary meaning. Id. The Supreme Court has held that so-called “product-design

trade dress,” i.e., designs that appear on a product itself, like Converse’s CMT that appears on its

CTAS shoes, can never be inherently distinctive. Wal-Mart, 529 U.S. at 216. Rather, these

designs must always be shown to have acquired secondary meaning in order to receive common

law trademark protection. Id. (“[I]n an action for infringement of unregistered trade dress under

9 
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§ 43(a) of the Lanham Act, a product’s design is distinctive, and therefore protectible, only upon

a showing of secondary meaning.”). Accordingly, to establish common law trademark rights for

its CMT mark, Converse must show that, prior to the date of the first alleged use by each Active

Respondent, its mark had acquired distinctiveness through secondary meaning.

In Converse, the Federal Circuit articulated six factors that the Commission should

consider when deciding whether an alleged product-design trade dress has acquired secondary

meaning:

(1) association of the trade dress with a particular source by actual purchasers
(typically measured by customer surveys);

(2) length, degree, and exclusivity of use;

(3) amount and manner of advertising;

(4) amount of sales and number of customers;

(5) intentional copying; and

(6) unsolicited media coverage of the product embodying the mark.

Converse, 909 F.3d at 1120. “All six factors are to be weighed together in determining the

existence of secondary meaning.” Id. Moreover, as the party attempting to establish legal

protection for its unregistered trade dress, Converse bears the burden of proving secondary

meaning by a preponderance of the evidence. See Yamaha Int’l Corp. v. Hoshino Gakki Co., 840

F.2d 1572, 1578-79 (Fed. Cir. 1988).

Finally, the Federal Circuit explained that the most relevant time period for determining

the CMT’s acquisition of secondary meaning depends on each accused infringer’s date of first

use as discussed below. Converse, 909 F.3d at 1116. The Court held that the Commission must

make “a specific determination of secondary meaning as of the relevant date,” because in an

infringement action, “the party asserting trade-dress protection must establish that its mark had

10 
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acquired secondary meaning before the first infringing use by each alleged infringer.” Id. In

other words, Converse must prove that it had a valid and legally protectable trademark from

which common law rights arose prior to each respondents’ first use of the mark. The Court also

emphasized that the five-year period prior to the respondent’s first use is the most relevant time

period to consider when determining whether a mark has become distinctive. Id. at 1121.

1. Date of First Use, Secondary Meaning, and Noninfringement: New

Balance

The RID found that the date of first use for New Balance was 2003. RID at 9. No party

petitioned for review of this date, and the Commission agrees with the RID’s conclusion and

adopts the RID’s finding herein.

Moreover, the Commission has determined to affirm and adopt the RID’s finding that

New Balance’s accused PF Flyers shoes are not substantially similar to the CMT and, therefore,

do not infringe the CMT, regardless of whether Converse had rights in the mark in 2003. See id.

at 79-84. In particular, the RID found that the midsole designs of the accused PF Flyers shoes

lack two elements of the CMT. Id. Converse did not petition the Commission for review of the

RID’s finding that the accused New Balance shoes do not infringe. See Comp. Pet. at 13; Comp.

Sub. at 4 n.1, 77 n.21. The Commission sees no reason to disturb the RID’s noninfringement

findings as to New Balance’s two PF Flyers models: the “Center” and the “Bob Cousy” shoes,

which New Balance has sold since 2003 and 2005, respectively. Accordingly, the Commission

does not address whether the CMT acquired secondary meaning prior to New Balance’s date of

first use in 2003.

The Commission further notes that its noninfringement determination as to New

Balance’s accused PF Flyers due to lack of substantial similarity to the CMT is relevant to the

Commission’s discussion of factor 2 in the secondary meaning analysis below, because the

11 
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historic PF Flyers that the Active Respondents allege constitute third-party use are the same as

New Balance’s accused PF Flyers at least with regard to the midsole design. See Resp. Reply at

57; Comp. Reply at 45-47; OUII Reply at 24-25.

2. Date of First Use and Secondary Meaning: Skechers

The RID found that the relevant date for assessing the existence of secondary meaning of

the CMT for Skechers is 2001.10 RID at 9-11 (citing RX-6601C; RX-2092C at Q/A 50-56). No

party petitioned for review of this date. The Commission agrees with the RID’s conclusion and

adopts the RID’s finding herein. Id.; see also RDX-0036C.006-007.

The Commission considers each factor in determining the existence of secondary

meaning individually below. All of the factors and the relevant evidence are then weighed to

determine whether Converse established that its CMT had acquired secondary meaning prior to

Skechers’ first use.

a. Factor 1: Association of the Trade Dress with a Particular

Source by Actual Purchasers

A complainant may show that a mark has acquired distinctiveness through consumer

surveys, although a survey is not required. See generally 2 McCarthy on Trademarks and Unfair

10
The parties did not specify or dispute the precise months and dates of first use, and the RID did
not make any factual findings as to the precise months and dates of first use. Because Converse
bears the burden of showing that the CMT had secondary meaning before the alleged
infringement began, the Commission presumes that Skechers’ first use was on January 1, 2001.
Cf. THE TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 903.06 (Oct. 2018) (during
examination, when the applicant provides an indefinite date of first use, the USPTO affords the
applicant the least advantageous date of first use (e.g., “The only date that will be recognized for
USPTO proceedings is the latest definite date specified by the applicant. . . . When only a year is
given, the date presumed for purposes of examination is the last day of the year.”)); Tone Bros. v.
Sysco Corp., 28 F.3d 1192, 1201 (Fed. Cir. 1994) (“Secondary meaning must be shown to have
existed prior to the date on which the accused infringer commenced using a confusingly similar
trade dress.”). In any event, the parties have not suggested that resolving secondary meaning
hinges on identifying the precise date when Skechers allegedly began using the CMT. Thus, the
Commission’s conclusion would not change if Skechers’ first use was on December 31, 2001.
12 
 PUBLIC VERSION

Competition § 15:30 (5th ed.) (explaining that while a survey is not required, it can provide

“direct evidence of secondary meaning”) (“McCarthy”). The Federal Circuit acknowledged in

Converse that, at times, relying on survey evidence may be problematic. Converse, 909 F.3d at

1122; see also 2 McCarthy § 16:34. Specifically, the Court stated that “surveys are sometimes

difficult to use as evidence of historic secondary meaning . . . because ‘[t]he relevant consumer

population for assessing consumer attitudes at a point in the past is a group of consumers at that

point in the past’ and ‘[a] contemporaneous survey commissioned for litigation obviously cannot

access such a pool of respondents.’” Converse, 909 F.3d at 1122 (quoting Amicus Br. of All

Market Inc. 29). Thus, the Court directed the Commission to “only give such survey evidence

‘weight appropriate to the extent that it sheds light on consumer perceptions in the past.’” Id.

(quoting 2 McCarthy § 16:34).

The Court noted that the only relevant survey presented, Ms. Butler’s “CBSC Only”

survey (“the Butler survey”),11 was conducted in 2015, more than fourteen years after Skechers’

date of first use. Id. at 1123. Thus, the Court instructed the Commission to “give the Butler

survey little probative weight in its analysis, except to the extent that the Butler survey was

within five years of the first infringement by one of the intervenors.” Id.

On remand, the RID noted that the Butler survey was conducted in 2015, which is more

than five years after any of the relevant dates of first uses by the Active Respondents. RID at 13

(citing RX-1667C at Q/A 85). The RID thus afforded the Butler survey “little probative weight.”

Id. Because the Butler survey was conducted more than fourteen years after the relevant date of

11
“CBSC” refers to “Converse Bumper/Stripes/Cap Design,” which is the CMT. See RX-1667
at Q/A 24, 65; CX-0002. In the Butler survey, Ms. Butler asked whether consumers “who see
the CBSC Design with no upper would also identify the design of the shoe as coming from a
single source.” RX-1667 at Q/A 65; see also id. at Q/A 66.
13 
 PUBLIC VERSION

first use by Sketchers, the Commission, like the RID, gives it little probative weight, and it does

not change the outcome of the Commission’s weighing of the factors.

Converse also presented non-survey evidence in the form of Flickr photos, 2008 brand

tracking study, and market research evidence. See Comp. Br. at 27-30 (citing CX-00237C at

Q/A 258-62, 308-26; CDX-0237.0065C (Flickr); CX-5272 (2008 Brand Tracking Study); CX-

249C at Q/A 128-132 (market research)). The Commission notes that Converse did not petition

for review of the RID’s findings that this evidence failed to demonstrate that users associated the

CMT with Converse. See RID at 13-19; Comp. Pet. at 19 (“[T]o narrow the issues for review

and appeal, Converse does not petition the Commission to review the RID’s analyses and

findings regarding factors 1 and 5 as to the Active Respondents”). Therefore, Converse has

abandoned this issue. 19 C.F.R. § 210.43(b)(2). Nevertheless, even if the Commission were to

consider this evidence, the Commission agrees with the RID that the evidence has little relevance

and is not reliable. RID at 16-19. Thus, because there is a lack of pertinent survey evidence and

other actual-association evidence showing secondary meaning, this factor is neutral and favors

neither party. See Converse, 909 F.3d at 1123 (“Unless the survey affirmatively shows a lack of

secondary meaning, there is simply a lack of survey evidence of secondary meaning—which is a

neutral factor favoring neither party.”).

b. Factor 2: Length, Degree, and Exclusivity of Use

The Federal Circuit instructed that considerations of “length, degree, and exclusivity of

use” are “substantially related and should be evaluated together,” and that “[t]he most relevant

evidence will be the trademark owner’s and third parties’ use in the recent period before first use

or infringement.” Id. at 1120. The Court stated that “in evaluating factor 2, the ITC should rely

principally on uses within the last five years.” Id. at 1121. This is because “[t]he critical issue

for this factor is whether prior uses impacted the perceptions of the consuming public as of the
14 
 PUBLIC VERSION

relevant date.” Id. (citations omitted). The Court further stated that the inquiry is not entirely

limited to the five years before the relevant date, but that this period is the most relevant because

“[c]onsumers are more likely to remember and be impacted in their perceptions by third-party

uses within five years and less likely with respect to older uses.” Id. In contrast, “uses older

than five years should only be considered relevant if there is evidence that such uses were likely

to have impacted consumers’ perceptions of the mark as of the relevant date.” Id.

The Federal Circuit also directed the Commission, on remand, to “constrain its analysis

of both Converse’s use and the use by its competitors to marks substantially similar to

Converse’s registered mark.” Id. at 1122. The Court provided pictures of shoes that it

determined are not “substantially similar” to the asserted mark and should not be considered. Id.

The Court also gave three examples of situations where it would not consider the third-party use

to be “substantially similar” to the asserted mark: (i) shoes that “bear at most a passing

resemblance to the [CMT],” (ii) shoes that are “missing at least one of the elements of the

[CMT],” and (iii) shoes that are depicted “in such poor resolution that no reasonable comparison

can be made.” Id.

With respect to Converse’s use of the CMT, the RID found that it “is undisputed that

Converse continuously used the CMT from 1932 to the present, including throughout the

relevant five-year periods.” RID at 20 (citing CX-00242C at Q/A 6, 49, 55; CX-00243C at Q/A

55, 189; CX-00237C at Q/A 112; Comm’n Op. at 7). The Commission finds that the evidence

shows that Converse’s CTAS high-top shoes bearing the CMT have been continuously and

consistently marketed and sold by Converse for over eighty years from the early 1930s to the

present, and a low-top version of the CTAS shoes has been marketed and sold since the 1950s.

CX-00242C at Q/A 49, 55; CX-00243C at Q/A 55, 189; CX-00237C at Q/A 112, 123, 128.

15 
 PUBLIC VERSION

particular, both the historic PF Flyers shoes and the PF Flyers shoes accused of infringement lack

two elements of the CMT and, therefore, both are not substantially similar to the CMT. See

Resp. Reply at 57; Comp. Reply at 45-47; OUII Reply at 24-25. The Federal Circuit in Converse

specifically stated that “in the invalidity determination, marks that are not substantially similar

cannot be considered,” and in assessing infringement, “accused products that are not

substantially similar cannot infringe.” Converse, 909 F.3d at 1124 (citations omitted). In other

words, because the midsoles on the accused PF Flyers are not substantially similar in the

infringement context, the historic PF Flyers cannot be substantially similar in the validity context

(e.g., for establishing secondary meaning). Accordingly, the Commission finds that the historic

PF Flyers shoes are not third-party uses for purposes of secondary meaning.

The primary evidence relied upon by the Active Respondents for third-party use relates to

Keds. The RID found that Keds promoted, sold, and advertised shoes bearing the CMT between

1988 and 2011. RID at 23-24. The Active Respondents assert that the evidence establishes that

Keds’ design remained consistent throughout its decades of concurrent use. See Resp. Reply at

28 (citing RX-660 (1965); RX-2305.005 (1988); RX-2478.006 (2000); JX-0072C at Exhibit B

(2011)). The Commission finds, in light of Converse, that the evidence prior to 1996 is far less

relevant to the validity of the mark with respect to Skechers because the record does not show

that the Keds’ design was consistent or that it would “have impacted consumers’ perceptions of

the mark as of the relevant date.” Converse, 909 F.3d at 1121. Accordingly, the Commission

finds that the pre-1996 evidence related to Keds, e.g., an advertisement from Ebony Magazine in

1965, a resale listing of a 1970 Keds on the website Etsy.com, and listings of Keds Airwalk

shoes in J.C. Penney catalogs from 1988 and 1989 warrants no weight. RX-0660; RX-2596;

RX-2305.005; RX-9350.002. Further, the Commission notes that this evidence is insufficient to

17 
 PUBLIC VERSION

shows that Keds promoted and sold shoes bearing the CMT in the U.S. prior to 2012, the

evidence does not reliably indicate whether and to what extent such shoes were sold within the

relevant time period before Skechers’ first use. The pre-1996 evidence related to Keds does not

fill this evidentiary gap because Converse has not shown that any of the pre-1996 evidence

relates to the Historic Kicks Design. Without additional information, the record evidence does

not reliably indicate that Keds’ use of the CMT was more than inconsequential during the

relevant time period. See Kichler, 192 F.3d at 1352 (stating that the law “makes allowance for

use by others which may be inconsequential or infringing”).

The Active Respondents point to three other alleged third-party uses that occurred in the

five years prior to Skechers’ first use: (1) two Disney catalogs featuring Mickey & Tigger Hi-

Top Sneakers (1999) (RX-2826.003 & RX-2827.0003); and (2) a J.C. Penney catalog featuring a

Winnie the Pooh leather platform (2000) (RX-9668.008/RX-8278.008).

With regard to the shoes shown in the two Disney catalogs, Converse does not dispute

that they are substantially similar to the CMT. Comp. Sub. at 18-19. The RID found, however,

that these images have not been shown to be more than inconsequential third-party use because

“there is no evidence of consumer perception as to the images from Disney . . . such as sales

data, circulation numbers [of the catalogs], or marketing/advertising spends.” RID at 40, 42-43.

The Commission agrees. Other than the fact that both catalogs were mailed to the same

individual in Texas, there is no evidence regarding circulation of these Disney catalogs and no

sales figures for these shoes. Comp. Sub. at 19 (citing Palm Bay Imports, Inc. v. Veuve Clicquot

Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373-74 (Fed. Cir. 2005) (holding “where

the record includes no evidence about the extent of third-party uses, the probative value of this

evidence is . . . minimal”) (citing Han Beauty, Inc. v. Alberto–Culver Co., 236 F.3d 1333, 1338

21 
 PUBLIC VERSION

Having examined all of the asserted evidence of alleged third-party uses, the Commission

finds that most of this evidence from the relevant time periods has little or no probative value

because the uses were either not substantially similar to the CMT (e.g., historic PF Flyers shoes

and the J.C. Penney catalog of Winnie the Pooh shoe), or the evidence has not been shown to be

more than inconsequential use (e.g., the two 1999 Disney catalogs). All this evidence, taken

together, demonstrates that Converse maintained longstanding, continuous, consistent, and

substantially exclusive use of the CMT during the relevant time frame. Thus, the Commission

holds that this factor weighs in favor of a finding of secondary meaning.

c. Factor 3: Amount and Manner of Advertising

The Federal Circuit referred to advertising campaigns when stating that “uses older than

five years should only be considered relevant if there is evidence that such uses were likely to

have impacted consumers’ perceptions of the mark as of the relevant date.” Converse, 909 F.3d

at 1121. The Court gave the following as an example: “this might be the case where a particular

advertising campaign has been in use for longer than five years.” Id. at 1121-22.

Consistent with the Federal Circuit’s guidance, the Commission agrees with the RID that

it is appropriate to rely on past advertising content and expenditures, because “[b]y continuously

promoting the CMT, Converse’s advertisements ‘were likely to have impacted consumers’

perceptions of the [CMT]’ as of the date of the Active Respondents’ first infringing uses.” RID

at 49. This is the type of long-standing advertising campaign that the Federal Circuit alluded to

in Converse, because it has been in use for longer than five years.16

16
Converse argues that advertising evidence occurring after the Active Respondents’ first uses
should also be considered relevant. For example, Converse claims that it “has also extensively
marketed All Star shoes on the Internet and through social media.” Comp. Sub. at 33 (citing CX-
243C at Q/A 109-18; CX-10492; CX-244C at Q/A 46, 82, 86). All of Converse’s Internet and

23 
 PUBLIC VERSION

The Commission further agrees with the RID that the evidence is undisputed that in

eighty years of Converse advertisements, the CMT appears in nearly all of them. RID at 49;

CDX-0243C.001 (Converse ads 1919-2014); CX-0237C at Q/A 124, 126, 128, 201-22; CX-

243C at Q/A 61-118. Exhibit CDX-0243C.001 shows the consistency of the marketing

campaign and the presence of the CMT in those advertisements over time. Converse’s expert,

Dr. Pham, testified that the “CMT elements on Converse All Star shoes acquired their present

forms in the late 1920s and early 1930s. Therefore, the CMT design has been used by Converse

for more than 80 years.”17 CX-0237C at Q/A 112.

As discussed in more detail below, the Commission finds that the evidence shows that

Converse has spent a substantial amount on advertising to promote its CTAS shoes in a manner

that regularly exposed the consuming public to the CMT embodied in those shoes over a period

of eighty years. As such, the Commission finds that this factor favors a finding of secondary

meaning.18 Converse paid for at least three types of U.S. media advertising: (1) magazines, in-

 
social media evidence post-date the critical dates of the Active Respondents’ first uses. Id.
Because Converse bears the burden to show that it has established secondary meaning of the
CMT before the Active Respondents’ first uses, this evidence is irrelevant to whether secondary
meaning existed prior to the date on which the Active Respondents commenced using the CMT.
See Converse, 909 F.3d at 1116-17.
17
While Dr. Pham testified that specific CMT elements were incorporated into Converse shoes
in the late 1920s, the overall combination of the CMT elements appeared in Converse shoes for
the first time between 1932 and 1934. CX-0237C at Q/A 118.
18
Converse argues that the Active Respondents did not raise this factor on appeal and are thus
precluded from relitigating the issue because it is law of the case. Comp. Sub. at 28-29 (citing
Suel v. Sec’y of Health & Human Servs., 192 F.3d 981, 984-86 (Fed. Cir. 1999)). The Federal
Circuit in the Converse decision “clarif[ied] and in some ways chang[ed] the legal landscape
with respect to proving secondary meaning.” Converse, 909 F.3d at 1118. The Court
“conclude[d] that on remand, Converse has not waived the argument that its mark acquired
secondary meaning even before the date of registration under the appropriate standards.” Id.
The Court instructed the Commission, on remand, to apply the Court’s six-factor test to the

24 
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store, and online (CDX-0243C.001); (2) yearbooks (Comp. Sub. at 30); and (3) catalogs (id. at

31).

The first category directly affects the impressions of the consuming public because the

ads are direct-to-consumer advertisements and they show a consistent marketing practice over

the years. See CDX-0243C.001. The CMT is shown prominently in nearly all the images of the

CTAS shoes presented in Converse’s ads (except for a couple of instances where the stripes are

tonal, see, e.g., CX-02645; CX-01280.0021 (catalog)). Id. Dr. Pham’s witness statement

discussed numerous advertisements for Converse All Star shoes including “a 1948 advertisement

reflecting Converse’s introduction of the black-canvas/white-midsole high-top model that is still

sold today,” CX-0237C at Q/A 124 (citing CX-03699C, reproduced in part below), and “a 1957

ad reflecting Converse’s introduction of the oxford version of its All Star shoes using the same

Converse Midsole Trademark from the high top,” id. (citing CX-03714C, reproduced in part

below). As can be seen in these color exhibits, the stripes on the midsole are in red and blue

against a white background, which serves to highlight the CMT. Another time, the CMT is set

off against red, blue, or black backgrounds showing off the entire CMT, which is in white and

black.

record evidence, make findings under the appropriate standards, and weigh all factors “together
in determining the existence of secondary meaning.” Id. at 1120. Thus, the Commission is not
precluded from revisiting this factor.
25 
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The Commission finds that these ads are likely to have left an impression of the CMT on

consumers’ perceptions since consumers have been continuously and consistently exposed to

these ads since the 1930s. See Yamaha, 840 F.2d at 1583 (noting that “the constant promotional

display of the product pictures [in advertising] did contribute to the recognition of the [product

design] as source indicators”). The Commission also finds that consumers are likely to have

been exposed to the shoes that customers purchased and wore in public as a result of these

advertisements. Unlike other branding elements on the CTAS shoes, the CMT is visible “at

virtually any angle.” CX-242C at Q/A 64; see CX-243C at Q/A 57. The ID observed, “[w]hile

the CMT does not cover the entire shoe, it covers a large portion of the shoe,” and it “is not an

insignificant detail which is likely to be missed by the consumer.” ID at 53-54.

The Active Respondents make much of the fact that the CMT is often pictured in ads that

also say “Converse,” but the Commission finds that this association aids the consumer in making

a connection between the CMT and the source of the shoes, Converse. See ID at 53 (“Consistent

advertising of a design element in association with a brand’s name would make a consumer

likely to draw such a connection, particularly when the design element is a highly visible one

that is often featured prominently.”) (citing McCarthy at § 15.52); see Yamaha Int’l Corp. v.

Hoshino Gakki Co., 1986 WL 83747, at *9 (TTAB 1986) (finding the constant promotional

display of the product design in advertising and “in some cases with the written brand name on

the [product] not clearly discernible, although the brand name always appears elsewhere in the

advertising copy” served to stimulate recognition of the design), aff’d, Yamaha, 840 F.2d 1572

(Fed. Cir. 1988); Weber-Stephen Prods. LLC v. Sears Holding Corp., 2015 WL 5161347, at *2

(N.D. Ill., 2015) (finding that advertisements that prominently displayed the Weber grill and “put

the trade dress and the Weber name together in front of the public,” “gave rise to the possibility

27 
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(1990); CX-03745C to CX-03750C; CX-03798 (1991); CX-03799 (1992); CX-03800 (1992), the

ads that occur within the five-year time frame are the most relevant and are afforded more

weight. Converse’s advertising evidence from 1996-2000 includes print ads promoting

Converse’s CTAS shoes with the CMT.19 See, e.g., CDX-0243C.001; CX-03751C (1996); CX-

03752C (1998).

The second category of advertisements is yearbooks. The Converse yearbooks show

pictures of college basketball teams and players from around the country wearing the All Star

shoe bearing the CMT. See, e.g., CX-03089.004-009 (1949); CX-03092 (1962). These

basketball players wore the CTAS shoes during games in front of the consuming public. See

CX-237C at Q/A 114, 203, 224-225. Converse was “the dominant provider of basketball shoes”

in the 1950s and 1960s and was “estimated to have commanded 80-90% of the basketball shoe

market during this period.” CX-237C at Q/A 77. Converse had promoted its CTAS shoes

featuring the CMT through its yearbooks until 1983, with each yearbook distributed to “all

Basketball coaches, accredited officials, and athletic directors throughout the country,” and to

sporting goods stores, who are also consumers of the shoes. CX-237C at Q/A 203; see id. at Q/A

114-115, 206; Comp. Sub. at 30. The Commission finds that the yearbooks show a consistent

advertising campaign and likely affected consumers perceptions while they were circulated.

However, the Commission notes that the yearbooks ended in 1983, more than thirteen years prior

19
Converse asserts that the evidence also shows that in the years leading up to the Active
Respondents’ first uses, it continued to promote its CTAS shoes to consumers through television
and print advertising. See Comp. Sub. at 35-36 (citing CX-1094.0041-0042 (1992 Converse
catalog); JX-135.0012 (1994 Annual Report); JX-54.0054 (1995 Annual Report); CX-5279.0003
(2000 SEC Filing); CX-1417.0036 (2006 Converse catalog)). But other than highlighting certain
statements in the cited catalogs, Annual Reports, and SEC filing, Converse has presented no
actual evidence of the advertisements for the Commission to assess the nature and content of
those promotions.

30 
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in most of Converse’s media advertising for the past eighty years, the Commission gives weight

to Converse’s expenditures. The Commission, however, places more weight on the expenditures

within the five years prior to Skechers’ first use.

The Commission also discounts the weight it accords to the evidence on advertising

expenditures because they reflect advertising for the whole company and the advertisements are

not always specific to shoes bearing the CMT.21 See Target Brands, Inc. v. Hughes, 2007 WL

4287253, at *6 (TTAB 2007) (discounting advertising expenditures over a ten-year period

because applicant’s catalogs and Internet website advertisements displayed numerous products

under a variety of marks). The evidence shows that some Converse advertisements (e.g., print

ads), however, are exclusive or substantially exclusive to the CMT. While the Commission

discounts the weight given to the expenditures, the Commission nonetheless gives this factor as a

whole significant weight given the nature, longevity, and consistency of the print ads, as well as

the amounts spent on them.

Finally, the Federal Circuit does not require explicit “look-for” advertising to support a

finding of secondary meaning in trade dress cases. See, e.g., Yamaha, 840 F.2d at 1583; In re

Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1125 (Fed. Cir. 1985). Thus, the Commission

agrees that the RID properly rejected Respondents’ and OUII’s argument that explicit “look-for”

advertising is necessary in order to find that Converse’s advertising expenditures weigh in favor

of secondary meaning.22 Despite the lack of explicit “look-for” advertising of the CMT, as

21
While Converse did provide advertising expenditures specific to the CTAS shoes after 2007,
averaging about per year, Converse did not provide advertising amounts specific to
the CTAS shoes in the specific time periods before each Active Respondents’ first infringing
use. See CX-00243C at Q/A 103-107; CDX-0237.0041C.
22
Respondents admit that “‘[l]ook for’ advertising is not strictly required,” but then assert that it
is necessary in order to find that Converse’s advertising expenditures weigh in favor of
secondary meaning. Resp. Sub. at 34.
32 
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of copying. RID at 55. In particular, the RID found that Converse’s evidence of copying is not

within the relevant time frame (i.e., the evidence is from 2008 and later). Id. at 53-54. The RID

rejected Converse’s argument that evidence from 2008 and later is probative of copying in 2001

because it is “based on an assumption that lacks any evidentiary support.” Id. at 54 n.22.

Furthermore, the RID found that the evidence of counterfeit and knockoff products is no longer

relevant in light of the Converse decision because the evidence shows that, prior to 2007, such

copying was not problematic in the United States and was not widespread during the relevant

time frames. Id. at 54.

As discussed above, the Supreme Court in Wal-Mart cautioned against misuse or

overextension of product-design trade dress because product design almost invariably serves

purposes other than source identification. Wal-Mart, 529 U.S. at 213; see also Devan Designs,

Inc. v. Palliser Furniture Corp., 1992 WL 511694, at *11 (M.D.N.C. 1992), aff’d, 998 F.2d 1008

(4th Cir. 1993) (“Especially in product design cases, there may be an even more likely reason

why one might copy another’s trade dress such as to capitalize on a particularly attractive or

saleable product design.”); Aromatique, Inc. v. Gold Seal, Inc., 28 F.3d 863, 871 (8th Cir. 1994)

(“Where there is a demand for a type of product, capitalizing on that demand by copying that

product does not necessarily indicate that the original product has secondary meaning.”).

Subsequently, in TrafFix Devices, the Supreme Court observed that “[t]rade dress

protection must subsist with the recognition that in many instances there is no prohibition against

copying goods and products.” TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 29

(2001). As the Court explained, “[i]n general, unless an intellectual property right such as a

patent or copyright protects an item, it will be subject to copying.” Id. The Court stated that

“copying is not always discouraged or disfavored by the laws which preserve our competitive

37 
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purchasers; and (5) intentional copying—are neutral as to a finding of secondary meaning.

In concluding that Converse established secondary meaning prior to Skechers’ first use,

the Commission relies heavily on the fact that Converse has continuously and consistently used

and advertised the CMT on its CTAS shoes since the 1930s and that Converse’s use has been

substantially exclusive, especially during the most relevant five-year period prior to Skechers’

first use. The Commission also relies heavily on the longevity of Converse’s advertisement

campaign and the fact that the CMT has been shown to consumers through advertising

continuously and consistently over decades. The Commission finds that the continuous and

consistent advertising of the CTAS shoes embodying the CMT have caused consumers to

associate the CMT with the CTAS shoe that is sold only by Converse.

Thus, after considering and weighing all of the factors, especially in light of the Court’s

direction to focus on the most relevant time frame, the Commission finds that Converse has met

its burden of proving that the CMT acquired secondary meaning by the time Skechers used the

CMT for the first time in 2001 and had a valid and legally protectable trademark in the CMT as

of that time.

3. Date of First Use and Secondary Meaning: Highline

The RID found that the relevant date for assessing the existence of secondary meaning of

the CMT for Highline is 2007.28 RID at 11. No party petitioned for review of this date. The

Commission agrees with the RID’s conclusion and adopts the RID’s finding herein. Id.; see RX-

1391C (Highline’s Venus first sold in 2007); RX-1386C (Highline’s Virgo first sold in 2007).

28
See supra at note 10. The Commission presumes that Highline’s first use was on January 1,
2007. In any event, the parties have not suggested that resolving secondary meaning hinges on
identifying the precise date when Highline allegedly began using the CMT. Thus, the
Commission’s conclusion would not change if Highline’s first use was on December 31, 2007.
43 
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not dispute that they are substantially similar to the CMT.29 Comp. Sub. at 22-24. Fortune

Dynamic’s catalogs are distributed to its customers in the trade (i.e., “independent stores”,

“jobbers,” “wholesalers,” and “chain stores”), not to the ordinary consumer. CX-1538C at 52-

53. So to the extent this evidence is relevant, the Commission gives little weight to the catalog

because “there is no evidence of consumer perception as to the images from . . . Fortune

Dynamic catalogs, such as sales data, circulation numbers [of the catalogs], or

marketing/advertising spends.” RID at 43; see Palm Bay, 396 F.3d at 1373 (affirming the

Board’s finding that the strength of the asserted mark was not undermined by third-party use in a

publication that “is only distributed to the trade, and thus does not show the extent to which

consumers actually encounter these brands in the marketplace”); Aromatique, 28 F.3d at 872

(concluding that articles, which were published in trade journals were irrelevant, because they

were not read by the ordinary consumer and do not necessarily reflect the minds of consumers

with respect to the necessary connection between the trademark owner and its claimed marks).

Nor is there corroborating evidence to support Fortune Dynamic’s CEO’s tesimony that

Jackie and Mule was a “good seller” and was sold in the United States for 4-5 years after it first

appeared in a catalog in 2001. CX-1538C at 67-68 (the CEO could not remember approximate

sales amounts, thought that the company had not “kept the record[s] for 2001,” and was unable

to provide detailed information about the shoes). Thus, even if the Fortune Dynamic catalog

showing the Jackie and Mule shoes is a relevant third-party use, the record does not show that

29
Converse argues that it “enforced its rights against Fortune Dynamic, and, thus, its shoes
cannot defeat secondary meaning in the CMT.” Comp. Sub. at 22 n.7. Although Respondent
Fortune Dynamic was terminated from the investigation based on a settlement agreement and
entered into a consent order, Fortune Dynamic did not admit any wrongdoing and, thus, its shoes
have not been found to infringe the CMT. See Order No. 128, Ex. D (Agreement) at 2 (June 29,
2015), unreviewed by Comm’n Notice (July 15, 2015).

46 
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reflect advertising for the whole company and the advertisements are not always specific to

shoes bearing the CMT, the Commission nonetheless gives this factor as a whole significant

weight given the nature, longevity, and consistency of the print ads, as well as the amounts spent

on them. Moreover, as discussed in Part IV(A)(2)(d) supra, the evidence shows that in eighty

years of Converse advertisements, the CMT appears in nearly all of them. RID at 49. As such,

the Commission finds that this factor favors a finding of secondary meaning in the CMT prior to

Highline’s first use.

d. Factor 4: Amount of Sales and Number of Customers

Converse saw substantial growth of its CTAS shoes during the five-year time period prior

to Highline’s first use. The evidence shows that Converse sold “at least units for

in sales revenue in the five years leading up to Highline’s first infringing use in

2007.” RID at 52 (citing CX-05245C). Thus, the amount of sales and number of customers

during this period were significant. Consequently, the Commission finds that these sales provide

some circumstantial evidence that consumers were exposed to, and had knowledge of, the CMT.

As explained above in connection with Skechers, the Commission, however, has

discounted the weight it affords to the sales evidence in the absence of evidence contextualizing

the sales and because the CTAS shoes sold during the relevant time frame included other

recognizable marks, such as the All Star label or the Chuck Taylor All Star patch. See CDX-

0243C.001. Therefore, the Commission determines that Converse’s sales of its CTAS shoes

bearing the CMT is probative of secondary meaning for the time period prior to Highline’s first

use but is less probative than the other factors the Commission finds support secondary meaning.

e. Factor 5: Intentional Copying

Converse presented no evidence of intentional copying by Highline and it did not petition

for review of the RID’s finding that this factor is neutral due to a lack of evidence of copying.

52 
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Highline’s first use, the Commission relies heavily on the fact that Converse has continuously

and consistently used and advertised the CMT on its CTAS shoes since the 1930s and that

Converse’s use has been substantially exclusive, especially during the most relevant five-year

period prior to Highline’s first use. The Commission also relies heavily on the longevity of

Converse’s advertisement campaign and the fact that the CMT has been shown to consumers

through advertising continuously and consistently over decades and finds that they have come to

associate the CMT with the CTAS shoe that is sold only by Converse.

Thus, after considering and weighing all of the factors, especially in light of the Court’s

direction to focus on the most relevant time frame, the Commission finds that Converse has met

its burden of proving that the CMT acquired secondary meaning by the time Highline first used

the CMT, and as such, Converse had common law trademark rights in the CMT as of that time.

B. Infringement: Skechers and Highline

Having determined that Converse owns a valid and legally protectable mark in the CMT,

section 43(a) of the Lanham Act also requires “that there be a likelihood of confusion, mistake,

or deception” in order to establish a claim of infringement and prohibit copying of the design of

a product. L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1130 (Fed. Cir. 1993) (citing

15 U.S.C. § 1125(a)).

The ALJ applied the following factors in determining likelihood of confusion: “(1) the

degree of similarity between the designation and the trademark in appearance, the pronunciation

of words used, verbal translation of pictures or designs involved, and suggestion; (2) the intent of

the actor in adopting the designation; (3) the relation in use and manner of marketing between

the goods and services marked by the actor and those by the other; and (4) the degree of care

likely to be exercised by purchasers.” RID at 68 (quoting Certain Ink Markers & Packaging

55 
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Thereof (“Ink Markers”), Inv. No. 337-TA-522, Order No. 30 at 36 (July 25, 2005)). The ALJ

stated that the Commission “may also consider additional factors, such as the strength of the

mark or actual confusion.” Id. The four factors identified above come from the Restatement of

Torts § 729 (1938) and have been historically employed by the Commission to determine

likelihood of confusion.

No party disputed the ALJ’s selection of relevant factors for determining likelihood of

confusion in the underlying investigation, and none disputes the ALJ’s selection in this remand

proceeding.32 The only dispute raised by the Active Respondents is whether the RID erred in

failing to analyze the strength of the mark factor even though they presented evidence on it.

Indeed, on appeal, the Active Respondents had raised this argument along with several other

arguments in favor of affirmance. However, other than clarifying the degree of similarity factor,

the Federal Circuit found none of the Active Respondents’ other arguments persuasive.

Converse, 909 F.3d at 1123-24. As such, Converse’s submissions in the remand proceeding do

not address this factor and the Commission declines to make findings on this factor in the first

32
The Federal Circuit has recently applied the DuPont factors framework to the likelihood of
confusion analysis in reviewing the Commission’s infringement determination. See Swagway,
LLC v. Int’l Trade Comm’n, 934 F.3d 1332, 1338 n.2 (Fed. Cir. 2019) (citing In re E.I. DuPont
DeNemours & Co., 476 F.2d 1357 (C.C.P.A. 1973)). That framework includes thirteen factors,
many of which are similar to, or overlap with, the Restatement of Torts factors. Following the
Swagway decision, the ALJs at the Commission have begun employing the DuPont factors and
the Commission has approved the use of the DuPont framework. See Certain Pocket Lighters,
Inv. No. 337-TA-1142, ID, 2020 WL 2094127, at *7, 10-13 (Feb. 12, 2020), unreviewed in
relevant part by 82 Fed. Reg. 23528 (Apr. 28, 2020); Certain Motorized Vehicles and
Components Thereof, Inv. No. 337-TA-1132, ID, 2019 WL 7288994, at *9-11 (Nov. 8, 2019),
aff’d, Comm’n Op. at 24 (June 18, 2020).
Given the parties’ positions and that the evidentiary record was not reopened in the
remand proceeding before the ALJ, the Commission declines to change the factors analyzed at
this late date in this investigation. Furthermore, the Commission observes that the ALJ analyzed
the proper factors, whether considered under the Restatement of Torts factors or the DuPont
factors.
56 
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necessarily a prerequisite to a finding of likelihood of confusion in product configuration

cases.”); Eng’g Dynamics, Inc. v. Structural Software, Inc., 26 F.3d 1335, 1350 (5th Cir. 1994)

(“The Lanham Act prohibits passing off goods or services as those of a competitor by employing

substantially similar trade dress which is likely to confuse consumers as to the sources of the

product.”), modified on other grounds, 46 F.3d 408 (5th Cir. 1995)). Therefore, the first inquiry

is whether the accused shoes’ trade dress is substantially similar to the asserted CMT trade

dress.33

The RID found that there is no dispute that Skechers’ accused HyDee HyTop shoes

include each of the design elements of the CMT. RID at 76-77; Comp. Sub. at 79-81; Resp. Sub.

at 79. The Commission agrees. As can be seen in the exemplary photos below, the Commission

finds that Skechers’ HyDee HyTop shoe (RX-4002C, reproduced below on the left) incorporates

the CMT (CX-00002, reproduced on the right below). Specifically, it has the two stripes on the

midsole of the shoe, the toe cap, and the multi-layered toe bumper featuring diamonds and line

patterns. Id. In addition, the relative position of these elements is the same as the CMT. See

CX-00002; RID at 71; RX-2092C at Q/A 113; CDX-0240.040.

33
Throughout the investigation, Converse asserted that only post-sale confusion is relevant, and
that point-of-sale confusion is irrelevant to the infringement question on remand in this
investigation. See, e.g., ID at 65; Comp. Reply Br. at 56. The Commission finds evidence of
point-of-sale confusion and post-sale confusion are both relevant to the infringement question on
remand. See ID at 65; Comm’n Op. at 28. However, since Converse bears the burden of proof
as to likelihood of confusion and it presented no evidence of point-of-sale confusion, the
Commission addresses only the evidence related to post-sale confusion.
58 
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even distinctive product designs cannot be absolutely shielded from copying)); Conopco, Inc. v.

May Dep’t Stores Co., 46 F.3d 1556, 1571 (Fed. Cir. 1994) (“If the use of the mark is truthful

and unlikely to confuse consumers as to the source of the product, then the use is permissible.”).

Skechers argues that its branding is sufficient to dispel confusion otherwise resulting

from the similarities with the HyDee HyTop shoes, and the RID agreed. RID at 77-78. In

particular, the RID noted that the “Skechers’ name appears on the heel of the shoe.” Id. at 78

(citing RX-2092C at Q/A 120; see also RPX-0266; RPX-0267). The RID also found that “the

evidence shows that consumers are likely aware of the Skechers brand.” Id. (citations omitted).

Thus, the RID concluded that, similar to the branding used in L.A. Gear, “this branding is likely

to dispel confusion.” Id. (citing 988 F.2d at 1133-34).

Converse argues that the RID erred by not ending its degree of similarity analysis after

finding the accused products bear marks that are substantially similar to the CMT and by

proceeding to determine that the branding on the heels of the shoes serves to dispel confusion.

Comp. Sub. at 81. According to Converse, “the Federal Circuit expressly rejected the

proposition that labeling prevents likelihood of confusion in this case.” Id. at 82 (citing

Converse, 909 F.3d at 1124).

On the contrary, the Court found that brand name labeling of the accused products is not

always “legally sufficient to avoid likelihood of confusion but . . . those labels may be highly

probative evidence” in the substantial similarity analysis. Converse, 909 F.3d at 1124. The issue

of brand name labeling on the HyDee HyTop shoes was not previously addressed in the original

ID. See RID at 78 n.34. Moreover, consideration of brand name labeling is necessary to fully

address the Federal Circuit’s remand. Converse, 909 F.3d at 1123; see Versa Prods., 50 F.3d at

203 (an inquiry into substantial similarity must take into account, where available, evidence of

60 
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labeling, packaging, and advertisements). Thus, the Commission finds the RID did not err in

considering evidence of brand name labeling in its degree of similarity analysis.

In applying regional circuit law, the Federal Circuit has held that clear, prominent, and

permanent labeling of a mark that is well-known or recognized by consumers can outweigh the

similarities in the designs of products at least absent a showing that consumers have real

confusion or likelihood of it with regard to the origin of the products involved. See L.A. Gear,

988 F.2d at 1134 (applying Second Circuit law, and finding no confusing similarity between the

plaintiffs’ athletic shoe and defendant’s copies because “the conspicuous and permanent

placement of the trademarks of [plaintiff] L.A. Gear as well as the copyist, and the sophistication

of purchasers of fashion athletic shoes, clearly outweigh the similarities in the shoe design,

insofar as consumer confusion as to source is avoided”); Conopco, 46 F.3d at 1570-71 (applying

Eighth Circuit law and holding that similarities between the parties’ products did not establish

likelihood of confusion “in view of the prominent placement of the [defendant’s] logo on the

front of the [defendant’s] product, the extensive exposure consumers have had to that logo, and

the extended time period over which consumers have been able to distinguish the [defendant’s]

and [plaintiff’s] brands without any apparent confusion”); see also Versa Prods., 50 F.3d at 202-

03 (explaining that in a product configuration trade dress case, “except where consumers

ordinarily exercise virtually no care in selecting a particular type of product (as may be the case

with inexpensive disposable or consumable items . . . clarity of labeling in packaging and

advertising will suffice to preclude almost all possibility of consumer confusion as to source

stemming from the product’s configuration”).

Applying these precepts in view of the record evidence, the Commission concludes that

Skechers’ clear and prominent use of its well-known brand name on the accused HyDee HyTop

61 
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CX-00240C at Q/A 533 (“brands [in the footwear industry] are very important to differentiate

the products from each other”), Q/A 535 (“Brands in the footwear industry are highly visible in

the post-purchase environment.”); Tr. (Pham) 380:24-381:20; 383:14-384:4 (brands are

“diagnostic of the source” with a primary purpose to tell consumers who makes a product).

Converse argues the “labeling on the license plate at the back heel of the shoe would be

‘imperceptible’ at ‘any significant distance.’” Comp. Sub. at 85 (citing Lois Sportswear, U.S.A.,

Inc. v. Levi Strauss & Co., 799 F.2d 867, 872-73 (2d Cir. 1986)). The Skechers’ heel label is not

visible from the front or the side of the shoe and this detracts from the prominence of the

branding in the post-sale context. Nevertheless, the ID found that “[i]n the case of Skechers, the

logos often appear in bright colors and are thus noticeable, even from a distance.” ID at 68

(citations omitted); see also id. at 70 (characterizing Skechers’ logos as “highly visible”). Thus,

the Commission finds that Skechers’ branding on the HyDee HyTops can often be seen in the

post-sale context. In addition, the Commission finds the RID’s reliance on the heel branding is

particularly relevant to these footwear products because this branding is incorporated into the

midsole design of Skechers’ shoes and is visible in the post-sale context.34

34
Converse’s CTAS footwear has also had the All Star mark on the heel and tongue of the shoe
for many years (including the relevant time periods in 1996-2000 and 2002-2006) and, more
recently, has included the Converse word mark on the heel. See CX-0243C at Q/A 57; RX-
10122C at Q/A 66, 68; RX-1571C at Q/A 159; RX-0105 (2010 Converse CTAS Branding
Guidelines). Thus, the Converse CTAS footwear and Skechers’ HyDee HyTop shoes bear
conspicuous and permanent branding at the same heel locations.
However, the parties did not present evidence whether it is the practice of the trade for
shoe manufacturers like Converse and Skechers to place their brand names on the heel and
tongue of their shoes such that consumers would look for branding at these locations. If the
practice of the trade is to place the brand name on the heel and tongue, then it is more likely that
consumers would know to look for the branding there and finding such branding in those
locations is likely to dispel confusion. In addition to Converse and Skechers, other shoe-makers
such as Keds and New Balance also place their brand names on the heel. See Resp. Sub. at 95
(PF Flyers’ heel branding); JX-72C.0029, .0031, Ex. B (Keds’ heel branding).

63 
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In view of the above, the Commission finds that purchasers of the HyDee HyTop shoes

are sufficiently sophisticated such that they “are likely to be well aware of the sources of such

shoes, when such sources are conspicuously marked on the shoes” by both Skechers and

Converse. L.A. Gear, 988 F.2d at 1134. In addition, the Commission finds that although the

shoes are moderately priced, the degree of care exercised by the purchasers is sufficiently high

such that the purchaser would discern the different sources of the Converse and Skechers shoes.

Thus, the Commission finds this factor weighs slightly against a finding of likelihood of

confusion with respect to Skechers’ HyDee HyTop shoes.

e. Likelihood of Confusion Factor (5): Actual confusion

Actual confusion is not a factor listed in the Restatement of Torts test. Nevertheless, the

ALJ considered this factor in this investigation, and the Commission has considered it in the

past. See Handbags, Inv. No. 337-TA-754, ID at 9. The original ID found that the actual

confusion factor does not favor a finding of likelihood of confusion. ID at 66-67. Specifically,

the ID found that Converse’s evidence of actual confusion, which consisted of “consumer

comments,” was unreliable and “should carry little weight in this Investigation.” See id.; CX-

0442C; CX-0460C; CX-0461C; CX-3866. Even if the comments were credible, the ID found

that “there is still very little evidence that consumers are actually confused by the sale of

Respondents’ Accused Products” given that “the amount of comments pales in comparison to the

sales of the shoes.” ID at 66-67. Converse did not petition for review on this issue.

The Commission agrees with the ID’s assessment of the evidence. Exhibit CX-3866 is

irrelevant because it is a blog post about Skechers’ Daddy’$ Money shoe, not Skechers’ HyDee

HyTop shoe. The three other exhibits (CX-0442C; CX-0460C; CX-0461C) include a total of 17

comments purportedly from consumers of the HyDee HyTop shoes. However, as the ID noted,

Mr. Winer “acknowledged that nothing was done to verify the commenters’ identities, their
69 
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presence in the U.S., or whether they are in fact purchasers of the Accused Products.” ID at 66

(citing JX-00412C). Even if the comments were reliable, only three of the 17 comments even

mention any possible confusion with Converse-branded shoes.

Accordingly, there is little, if any, credible evidence of actual confusion, which is telling

since Skechers’ HyDee HyTop shoes co-existed in the marketplace with Converse’s CTAS

footwear in 2013 and 2014. See RX-2092C at Q/A 117. Thus, the Commission finds the meager

evidence of actual confusion when compared with Sketchers’ co-existence in the market weighs

against a finding of likelihood of confusion. See Swagway, 934 F.3d at 1339 (noting that the

Federal Circuit has found the absence of any evidence of actual confusion weighs against a

likelihood of confusion).

f. Weighing the Likelihood of Confusion Factors

The Commission notes that no factor weighs in favor of a finding of likelihood of

confusion with respect to Skechers’ HyDee HyTop shoes. While there is no question that all

three elements of the CMT are incorporated into the HyDee HyTop shoes in the same relative

positions, the Commission relies heavily on the fact that the Skechers’ brand name on the

accused HyDee HyTop shoes is prominently displayed and permanently affixed to the heel on

the midsole of the accused products and appears in three other locations on the HyDee HyTop

shoes. The Commission finds that Skechers’ brand name is well-known and recognized by

consumers. The Commission concludes that Skechers’ branding, labeling, and marketing

significantly reduces the likelihood of confusion as to the source of Skechers’ HyDee HyTop

shoes especially absent evidence of an intent to confuse and meager evidence of actual confusion

or likelihood of it with regard to the origin of the products involved.

Finally, the Commission finds that consideration of the strength of the mark would not

alter its conclusion. Although the Commission concludes from the evidence that the CMT has
70 
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promoted in advertising campaigns in luxury, high end stores. The Commission relies heavily on

evidence showing there is little overlap in the distribution and marketing of the Highline At-Issue

shoes. The Commission also relies heavily on evidence that the price point of Highline’s

accused products is significantly higher and Highline’s consumers are more sophisticated

shoppers. The Commission finds Highline’s branding and marketing and the sophistication of

Highline’s consumers distinguish the Highline At-Issue Shoes from Converse’s shoes especially

absent evidence of an intent to confuse and absent evidence of actual confusion or likelihood of

it with regard to the origin of the products involved. See L.A. Gear, 988 F.2d at 1133-34;

Converse, 909 F.3d at 1124 (citing Conopco, 46 F.3d at 1570-71; Braun Inc. v. Dynamics Corp.

of America, 975 F.2d 815, 828 (Fed. Cir. 1992); Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d

1423, 1446-47 (Fed. Cir. 1984), abrogated on other grounds by Two Pesos, Inc. v. Taco Cabana,

Inc., 505 U.S. 763 (1992)). Thus, after weighing all of the factors, the Commission finds that

Converse has not met its burden of proving that there is a likelihood of confusion in order to

prohibit Highline’s use of the CMT on its shoes.

4. Other Accused Products Previously Found Noninfringing

The Commission had previously found a number of shoes to be noninfringing in part

because they were not substantially similar to the CMT: (1) Skechers’ Twinkle Toes and BOBS

Utopia; (2) Highline’s Vincent, Vodka, Volcano (Vulcano), Vox, Glen, Gossip, Eagle, Fanta,

Volt, and Ginger line of shoes; and (3) New Balance’s Sumfun shoes. See Comm’n Op. at 28

(citing ID at 64-104).

The RID rejected Converse’s argument that the Commission needs to revisit its previous

findings of noninfringement because Converse did not appeal the noninfringement findings.

RID at 85-86. Converse did not petition for review on this issue and, therefore, has abandoned

it. 19 C.F.R. § 210.43(b)(2). In addition, because Converse did not appeal the Commission’s
80 
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As an initial matter, Converse argues that it is not required to show that its domestic

industry is injured by or threatened with injury because “Respondents are in violation of 19

U.S.C. § 1337(a)(1)(C) and Converse is only required to establish a domestic industry related to

articles protected by the CMT under 19 U.S.C. § 1337(a)(2) and (3).” Comp. Br. at 107. The

Commission disagrees with Converse with respect to the statutory injury requirement applicable

to its common law trademark rights. Section 337(a)(1)(C) pertains to registered trademarks,

such as the ’753 trademark rights that Converse also asserts in this investigation. However,

Converse’s common law trademark claim against the Active Respondents imposes different

requirements than those that apply to an asserted statutory intellectual property right.

“Section 337 contains different requirements for statutory intellectual property (such as

patents, copyrights, and registered trademarks) than for other, nonstatutory unfair practices in

importation (such as trade secret misappropriation).” TianRui Grp. Co. v. Int’l Trade Comm’n,

661 F.3d 1322, 1335 (Fed. Cir. 2011). “The provisions that apply to statutory intellectual

property require that an industry relating to the protected articles exists or is in the process of

being established.” Id. (citing 19 U.S.C. § 1337(a)(2)). “In contrast, the general provision

relating to unfair practices is not satisfied by evidence showing only that a domestic industry

exists; it requires that the unfair practices threaten to [or have the effect of] ‘destroy[ing] or

substantially injur[ing]’ a domestic industry.” Id. (citing 19 U.S.C. § 1337(a)(1)(A)).

Converse’s common law trademark claim against the Active Respondents is based on its

common law trademark rights in the CMT, which is an action under section 337(a)(1)(A), not

section 337(a)(1)(C). Accordingly, Converse must show that these unfair methods or acts fall

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within 19 U.S.C. § 1337(a)(1)(A)(i)-(iii).41

In this regard, Converse also alleges that the threat or effect of the importation or sale of

articles that infringe its common law trade dress is “to destroy or substantially injure an industry

in the United States[.]” 19 U.S.C. § 1337(a)(1)(A)(i); Comp. Br. at 107-29. In determining

whether unfair acts have substantially injured the domestic industry, the Commission considers a

broad range of indicia, including: “the volume of imports and their degree of penetration,

complainant’s lost sales, underselling by respondents, reductions in complainant’s declining

production, profitability and sales, and harm to complainant’s good will or reputation.” Certain

Rubber Resins & Processes for Mfg. Same (“Rubber Resins”), Inv. No. 337-TA-849, Comm’n

Op. at 60-61 (Feb. 26, 2014).

“The injury requirement can also be met ‘[w]hen an assessment of the market in the

presence of the accused imported products demonstrates relevant conditions or circumstances

from which probable future injury can be inferred.’” Ink Markers, Inv. No. 337-TA-522, Order

No. 30 at 57 (citations omitted) (emphasis in original); see Certain Digital Multimeters, and

Products with Multimeter Functionality (“Digital Multimeters”), Inv. No. 337-TA-588, Order

No. 22 at 17 (Jan. 14, 2008). Such circumstances may include:

(1) substantial foreign manufacturing capacity;

(2) ability of imported product to undersell the domestic product;

(3) explicit intention to enter into the U.S. market;

(4) the inability of the domestic industry to compete with the foreign products
because of vastly lower foreign costs of production and lower prices; and

(5) the significant negative impact this would have on the domestic industry.

41
Converse’s argument is also unavailing in view of the legislative history. See TianRui, 661
F.3d at 1335-36 (citing H.R. Rep. No. 100–576, at 634; S. Rep. No. 100–71, at 347).
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0833C at 314-315. The Commission thus finds the record is devoid of any evidence that

Skechers’ sales of its Daddy’$ Money shoes has resulted in lost Converse sales.

c. Underselling

Converse further argues that Skechers’ underselling has the threat or effect of causing

substantial injury to Converse’s domestic industry. Comp. Br. at 122-124. Here, again,

Converse’s evidence and argument that its CTAS hi-top is undersold relate to accused products

other than Skechers’ Daddy’$ Money shoes and are therefore not probative. See id. at 123

(citing CX-240C at Q/A 916-923 (BOBS Utopia); CX-240C at Q/A 719-720 (Walmart Faded

Glory shoe); JX-3 (same); JX-5 (same); CX-5802 (same); CX-7938 at 0005). More generally,

the evidence shows that both Converse’s CTAS footwear and Skechers’ Daddy’$ Money shoes

are sold at moderate price points, $50 for core Chucks and $35 to $50 for Skechers’ accused

shoes. See CX-00244C at Q/A 57, 103. In “Converse’s Value Channel,” Chuck Taylor All Stars

can be found at lower prices, $19.99 - $24.99, and even lower. Id. at Q/A 108. Accordingly, the

Commission finds no evidence of underselling by Skechers’ Daddy’$ Money shoes.

d. Harm to Brand Equity and Goodwill

Finally, Converse argues that Respondents’ infringement has the threat or effect of

harming Converse’s brand equity and the goodwill that Converse built up through years of

continuous and substantially-exclusive use of the CMT. Comp. Br. at 127-128. Specifically,

Converse asserts that many Skechers Accused Products “incorporate embellishments that

Converse avoids, such as lights, bows, and sparkly gemstones.” Id. at 128. Converse asserts that

it “avoids these types of embellishments for safety reasons and to not extend its brand in

directions that would alienate its core consumers.” Id.

The Commission finds Converse’s arguments relating to embellishments apply to

Skechers’ Twinkle Toes shoes, not the Daddy’$ Money shoes. See id. (citing CX-240C at Q/A

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2014.44 Id. Even when the volume of imports for Skechers’ HyDee HyTop shoes is combined

with the larger volume of imports for Skechers’ Daddy’$ Money shoes, the Commission finds

the evidence does not show that the HyDee HyTop shoes held a significant share of the U.S.

market; that there was a significant volume of infringing imports; or that Skechers has made a

significant amount of sales of those infringing imports sufficient to show substantial injury to

Converse’s domestic industry. Moreover, there is no evidence that Skechers’ sale of its HyDee

HyTop shoes has resulted in lost Converse sales, and there is no evidence of underselling or

harm to Converse’s brand or goodwill by virtue of these shoes. Accordingly, the Commission

holds that if Skechers’ HyDee HyTop shoes were found to infringe, Converse has failed to show

the requisite injury.

3. The Highline At-Issue Shoes

The Commission also found that the Highline At-Issues Shoes do not infringe the CMT.

The Commission further finds that the evidence of record does not show that Highline’s

importation and sale in the United States of the Highline At-Issue Shoes, if found to be

infringing, has caused and/or threatened to cause substantial injury to Converse’s domestic

industry. The Commission finds that in 2013, its year of highest sales, Highline’s accused shoes

accounted for a mere 0.2% of the U.S. market for footwear that bears the CMT. See RX-10122C

at Q/A 60-61, 286; CX-00240C at Q/A 473; CDX-00240.018; CX-0229C at Q/A 59. The

Commission notes that Highline’s market share is even lower when its noninfringing Vincent,

Vodka, Volcano (Vulcano), Vox, Glen, Gossip, Eagle, Fanta, Volt, and Ginger lines of shoes are

excluded from the analysis. Even when the volume of imports for Highline’s accused shoes is

combined with the volume of imports for Skechers’ two accused shoes, the Commission finds

44
In Exhibit RX-2896C, the HyDee HyTop shoe styles are identified by five-digit numbers
beginning with “81.”
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id.; 15 U.S.C. §§ 1115(a) & 1057(b).

The Commission finds that it is appropriate to address the Active Respondents’ invalidity

arguments with respect to the ’753 trademark on remand because Converse continues to assert its

federally registered trademark rights in the CMT against the Active Respondents. By way of

background, in its complaint, Converse asserted that all Respondents infringe both its common

law trademark rights and its federally registered trademark rights in the CMT.45 See CX-1, ¶ 66

(Table 1), ¶ 591-595 (allegations of trademark infringement under Section 32(1) of the Lanham

Act, 15 U.S.C. § 1114(1)), ¶ 596-606 (allegations of false designation of origin/unfair

competition under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a)). Throughout the

investigation, the Active Respondents have contested the validity of the ’753 trademark. See,

e.g., Resp. Br. at 256-64; Resp. Reply Br. at 142-43, 155-56. The Commission specifically

asked Converse in the Notice of Review whether Converse withdrew its allegations that the

Active Respondents infringe its federally registered trademark rights, and in response, Converse

advised the Commission that it has not formally withdrawn those allegations. See Notice of

Review at 4; Comp. Sub. at 90-91; Resp. Sub. at 98-99; OUII Sub. at 86-87. Moreover, as

discussed above, Converse continues to maintain on remand that the ’753 trademark registration

relieves it of the need to prove its domestic industry is injured by or threatened with injury

because “the [Active] Respondents are in violation of 19 U.S.C. § 1337(a)(1)(C) and Converse is

only required to establish a domestic industry related to articles protected by the CMT under 19

U.S.C. § 1337(a)(2) and (3).” Comp. Br. at 107. In view of the parties’ arguments, the

Commission considers the invalidity arguments raised by the Active Respondents with respect to

45
As discussed above, the Defaulting Respondents did not appear before the Commission to
contest the complaint allegations and, therefore, have waived their right to assert any defenses.

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the ’753 trademark in determining whether there is a violation of section 337(a)(1)(C) by reason

of infringement of the ’753 trademark.46

Notwithstanding the Commission’s conclusion that it can properly adjudicate the

invalidity of the ’753 trademark on remand, the Commission rejects the argument that

Converse’s request for a GEO based on its showing of a violation by certain Defaulting

Respondents under section 337(d)(2) requires the Commission to adjudicate the validity of the

’753 trademark.47 See Resp. Br. at 254-55; OUII Sub. at 95. They argue, inter alia, that the

46
The Commission further concludes that it should address the invalidity arguments regarding
the ’753 trademark raised by OUII. As part of its investigatory functions in section 337
investigations, the Commission promulgated rules making OUII a full party to section 337
investigations. 19 C.F.R. § 210.3 (“Commission investigative attorney means a Commission
attorney designated to engage in investigatory activities in an investigation or a related
proceeding under this part.” & “Party means each complainant, respondent, intervenor, or the
Office of Unfair Import Investigations”); Lannom Mfg. Co. v. Int’l Trade Comm’n, 799 F.2d
1572, 1574, n.1 (Fed. Cir. 1986). Where, as here, OUII has been named as a party in the
Commission’s notice of investigation, 79 Fed. Reg. 68482–83 (Nov. 17, 2014), OUII thus has
the full scope of discovery tools available to it to assist with developing a complete
administrative record, identifying issues (including invalidity), and independently participating
in the hearing and briefing to address issues within the scope of the investigation. The
Commission has previously entertained defenses raised by OUII even when no private party has
made the same challenge. See, e.g., Certain Incremental Dental Positioning Adjustment
Appliances and Method of Producing Same, Inv. No. 337-TA-562, ID at 20 (June 1, 2006)
(permitting Staff to conduct discovery and introduce evidence on invalidity after Respondents
were barred from asserting invalidity”); aff’d by Comm’n Notice (Aug. 7, 2006).
Notably, the Federal Circuit’s opinion in Lannom cited Caulking Guns, in which only
OUII asserted invalidity because the respondents either defaulted, settled, or chose not to
participate. See Lannom, 799 F.2d at 1578 (citing Certain Caulking Guns, Inv. No. 337-TA-139,
USITC Pub. No. 1507, ID at 4-7, 14 (Mar. 1984), unreviewed by Comm’n Notice, 49 Fed. Reg.
670 (Jan. 5, 1984)). The Commission in that investigation permitted OUII to assert the defense
of invalidity irrespective of whether such a defense was pursued by another party to the
investigation. Thus, the Commission determines that OUII, as a participating party in the
investigation, may also raise trademark invalidity as an issue in this investigation. OUII has
consistently argued the ’753 trademark is invalid for lack of secondary meaning. See, e.g., OUII
Br. at 78-84; OUII Sub. at 87-88, 97.
47
As a remedy for a violation of section 337, Congress created two distinct forms of exclusion
orders: one limited and one general. Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d
1340, 1356 (Fed. Cir. 2008). The exclusion remedy for named parties that are found in default is

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potential for the Active Respondents’ products (and the products of non-parties) to be subject to

the GEO requires the Commission to adjudicate the ’753 trademark’s validity before issuing the

GEO. See id.

The Commission concludes that Converse’s request under section 337(d) for a GEO,

rather than an LEO, does not change the standard applicable to the Commission’s analysis of

whether a violation has occurred by reason of infringement of the ’753 trademark. A violation of

section 337(a)(1)(C) must be established under the same evidentiary standard as the predicate for

the issuance of an exclusion order under 19 U.S.C. §§ 1337(d)(1) (LEO), (d)(2) (GEO), & (g)(2)

(GEO). The only exception is provided under section 337(g)(1), where the complainant seeks

relief limited solely to the defaulting respondents (i.e., where the complainant requests an LEO, a

CDO, or both as to the defaulting respondent) and the Commission can find a violation based on

the allegations in the complaint, which are presumed to be true. This exception under section

337(g)(1), however, does not apply in the present investigation because Converse seeks a GEO.

Converse’s request for a GEO under section 337(d)(2) also does not alter the legal

principle set forth in Lannom, 799 F.2d at 1580, that the Commission may not, on its own,

adjudicate the validity of the ’753 trademark unless it has been raised by a party. In Lannom, the

Federal Circuit held that “Congress did not authorize the Commission to redetermine patent

validity when no defense of invalidity has been raised.” Id. The Court recognized that Congress

placed that authority with the PTO. Id. at 1579-80. While Lannom arose from a patent-based

investigation, the Commission has extended its holding to trademark-based investigations. See,

a limited exclusion order, or LEO, which is limited to “named respondents that the Commission
finds in violation of Section 337.” Id.; see 19 U.S.C. § 1337(d)(2). By contrast, a GEO “bar[s]
the importation of infringing products by anyone, regardless of whether they were a respondent
in the Commission’s investigation.” Id. at 1358 (quoting Fuji Photo Film Co. v. Int’l Trade
Comm’n, 474 F.3d 1281, 1286 (Fed. Cir. 2007)).
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e.g., Certain Reclosable Plastic Bags and Tubing, Inv. No. 337-TA-266, USITC Pub. No. 2171,

ID at 42 (Mar. 1989) (holding that the legal principle set forth in Lannom applies not only to

unchallenged patents, but also to unchallenged federal trademark registrations), unreviewed by

Comm’n Notice (March 16, 1988). Accordingly, the Commission concludes that it may not

adjudicate the validity of the ’753 trademark merely because Converse seeks a GEO in this

investigation.

2. Validity of the ’753 Trademark

Having determined that the validity of the ’753 trademark was properly raised in this

investigation in response to Converse’s allegations of infringement, the Active Respondents and

OUII bear both the burden of persuasion and the initial burden of production in rebutting the

presumption of validity of the ’753 trademark.48 See Converse, 909 F.3d at 1117.

Turning to the merits of the invalidity arguments, the Commission finds that the Active

Respondents and OUII have not shown that the ’753 trademark is invalid for lack of secondary

meaning at the time of registration.49 The Active Respondents and OUII largely rely on the

Butler survey and alleged third-party uses of the CMT to support their assertion that the CMT

did not have secondary meaning at the time of registration. See Resp. Br. at 256-64; Resp. Pet.

48
Moreover, regardless of whether or not the issue of invalidity is resolved on the merits, the
outcome in this investigation is the same. In other words, if the invalidity challenge by the
Active Respondents and OUII is not properly before the Commission for adjudication on the
merits, then Converse prevails on this issue. If the invalidity challenge is properly before the
Commission, the Commission finds that neither the Active Respondents nor OUII have shown
the ’753 trademark is invalid, as explained herein.
49
As discussed earlier, the Commission finds that Converse has shown that the CMT acquired
distinctiveness through secondary meaning prior to Skechers’ first use in 2001 and Highline’s
first use in 2007. The Active Respondents and OUII present no evidence that Converse
abandoned its mark or that the CMT lost its secondary meaning in the years following 2007 and
prior to the date of registration. For this reason, it may be unnecessary to address the secondary
meaning factors to determine the validity of the registered mark. Nevertheless, in order to
provide a full record on review, the Commission addresses the parties’ arguments below.
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Converse used the CMT throughout the five-year period prior to the ’753 trademark’s

registration date. See RID at 20. Because the Commission found that the CMT acquired

secondary meaning at least as early as 2001, use of the CMT after that date by the Active

Respondents would be an infringing use and is not relevant to the secondary meaning inquiry at

the time of registration. See Kichler, 192 F.3d at 1352; Pebble Beach, 942 F. Supp. at 1543.

Moreover, the 2011 Agreement between Converse and Keds’ owner, CB, further shows

that the mark had secondary meaning at the time of the ’753 trademark’s registration because it

shows that Converse maintained exclusive use of the CMT in the period of time just prior to the

’753 trademark’s registration. See supra at Part IV(A)(2)(b); McCarthy § 11:91 (“[T]he

successful policing of a mark adds to its strength to the extent that it prevents weakening of the

mark’s distinctiveness in the relevant market.”) (quoting Morningside Grp., Ltd. v. Morningside

Capital Grp., LLC, 182 F.3d 133, 139 (2d Cir. 1999)); cf. McCarthy § 15:25 (“When

determining the commercial or marketplace strength of a mark, the courts look to the same kind

of evidence of real world recognition of the mark as is used to decide the presence or absence of

secondary meaning.”). The Agreement states that it resolved Keds’ opposition to Converse’s

application for the ’753 trademark. See JX-0072C at 2.

The Active Respondents and OUII argue that other third-party uses existed during the

relevant time frame. See Resp. Br. at 259-62; OUII Br. at 81. At least some of the alleged third-

party uses are not substantially similar because they are missing at least one element of the CMT

or are reproduced in such poor resolution that no reasonable determination as to the use of the

mark can be made. See RX-2485C (Pro-Keds); RX-2487C (Pro-Keds); RX-2488C (Pro-Keds);

RX-8678.002 (“Vans Wellesley” Journeys); RX-8680.002 (“Vans No Skool” Journeys); RX-

8685; RX-8686; RX-2599.001 (“Levi’s Strauss Rylee 3 Buck” Sneakerfolio); RX-9663; RX-

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marketed that were the same as or substantially similar to the CTAS shoes bearing the CMT

mark. However, as OUII argues, there is no evidence that the counterfeiters were intentionally

copying the CMT mark specifically, as opposed to Converse’s shoes in general, or that they were

seeking to trade on some association between the CMT and Converse. See OUII Sub. at 49-50;

see Water Pik, Inc. v. Med-Systems, Inc., 726 F.3d 1136, 1157 (10th Cir. 2013) (the relevant

intent is the intent to “copy[] a particular mark, not…a competitor’s product”) (emphasis in

original); Duraco Prods. Inc. v. Joy Plastic Enterprises, Ltd., 40 F.3d 1431, 1453 (3d Cir. 1994)

(“[A]ttempts to copy a product configuration will quite often not be probative: the copier may

very well be exploiting a particularly desirable feature, rather than seeking to confuse consumers

as to the source of the product.”); cf. TrafFix Devices, 532 U.S. at 29 (“Trade dress protection

must subsist with the recognition that in many instances there is no prohibition against copying

goods and products.”). Accordingly, although this factor may not strengthen the argument in

favor of secondary meaning, it also does not serve to rebut the presumption that secondary

meaning exists.51

f. Factor 6: Unsolicited Media Coverage of the Product

Embodying the Mark

The Commission finds that the CTAS shoes embodying the CMT continued to be the

subject of unsolicited media coverage into the 2008-2013 time period. The evidence shows that

those shoes have been the subject of unsolicited media coverage in movies, magazines,

newspapers, and books during the 2008-2013 time period. See CDX-0237.0050C (images of

Percy Jackson & The Olympians: The Lightening Thief (2009); Diary of a Wimpy Kid (2010);

51
OUII argues that “the absence of any evidence of intentional copying of the CMT weighs
against finding secondary meaning,” but does not cite any case law to support its position. OUII
Br. at 83. OUII is unclear why the absence of any evidence of intentional copying supports a
lack of secondary meaning. Accordingly, the Commission finds that a lack of evidence of
intentional copying is a neutral factor favoring neither party. See Converse, 909 F.3d at 1123.
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section 337 by “reliable, probative, and substantial evidence.” Certain Sildenafil or Any

Pharmaceutically Acceptable Salt Thereof, Such As Sildenafil Citrate, And Products Containing

Same, Inv. No. 337-TA-489, Comm’n Op. at 4 (July 26, 2004) (quoting 5 U.S.C. § 556); H.R.

Rep. No. 100-40, at 161 (1987) (“Relief in the form of a general exclusion order must be

supported by a Commission finding of violations of the Act based on substantial, reliable, and

probative evidence.”).

Before examining the evidence related to Converse’s allegations of infringement against

the Defaulting Respondents, the Commission begins with a determination of the relevant date of

first infringing use for each Defaulting Respondent.52 Because the Commission finds below that

the first infringing use by each of the Defaulting Respondents occurred no earlier than September

10, 2013, the date of registration of the ’753 trademark, the federal registration trademark rights

apply to them and a determination must be made as to whether they can be held liable for

infringement of the ’753 trademark.

Based on the evidence Converse submitted with its complaint, the Commission finds that

Converse has proven a violation of section 337 by substantial, reliable, and probative evidence

with respect to Defaulting Respondents Foreversun and Dioniso, but not with respect to

Defaulting Respondents Xinya, Wenzhou, and Ouhai. The Commission examines the record

52
As discussed earlier, Converse asserted both the common law trademark rights in the CMT
and the ’753 trademark against the Defaulting Respondents in the complaint. CX-1, ¶ 66 (Table
1). The Commission previously affirmed the original ID’s finding of infringement by each of the
Defaulting Respondents. ID at 103-104; 81 Fed. Reg. 42377, 42379 (June 29, 2016). Judge
O’Malley in Converse stated that the defaulting parties’ “first uses began after the date of
registration”, 909 F.3d at 1128; however, neither the Commission nor the ID made findings as to
each Defaulting Respondent’s date of first use. Therefore, on remand, the Commission must
make a specific determination of the relevant date of first use for each Defaulting Respondent in
light of the Converse decision and because, to date, Converse has not formally withdrawn its
allegations that the accused products of the Defaulting Respondents infringe the common law
trademark rights in the CMT. See id. at 1116.

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however, there is no evidence in the record that supports the conclusion that Xinya manufactured

and imported the FILA shoes that Converse purchased.

Accordingly, the Commission finds that Converse has not shown, through substantial,

reliable, and probative evidence, that Xinya violated section 337.

d. Wenzhou

As for Defaulting Respondent Wenzhou, Converse asserts that Wenzhou’s earliest date of

infringing use is September 2014, based on a webpage that allegedly shows Wenzhou offering

shoes bearing the CMT for sale. See Comp. Sub. at 94 (citing CX-1, Ex. 186). It is unclear

whether the Wenzhou webpage is offering shoes for sale because the only sales price shown on

the webpage is in Chinese currency and there is no link to purchase the shoes. See CX-1, Ex.

186. Thus, the Commission finds the webpage cannot support a finding of first use or a violation

of section 337.

In addition, Converse alleged in the complaint that Wenzhou imported infringing shoes

into the United States. Specifically, “on information and belief,” Converse alleged that Wenzhou

exported at least one pair of accused shoes to Ositos Shoes, Inc. (“Ositos”).55 See id., ¶ 650

(citing Ex. 187C (spreadsheet identifying footwear Wenzhou exported to Ositos)).56

55
Respondent Ositos was terminated from the investigation based on settlement agreement and
consent order stipulation. 81 Fed. Reg. 6887.
56
Converse’s complaint alleged Wenzhou exported the accused shoes to Ositos sometime
between January 2010 and December 2013. See CX-1, ¶ 650. Converse’s complaint further
alleged that it purchased a pair of Wenzhou-made Ositos shoes in February 2013. Id. (citing Ex.
23). Exhibit O-1 to Exhibit 23, however, shows that the shoes were purchased in February 2014.
See id., Ex. 23, ¶ 30 (referring to Ex. O-1). The relevant portion of Converse’s Remedy
Submission to the Commission, Comp. Sub. at 94, does not address ¶ 650 of Converse’s
complaint, nor does it explain why Converse now contends that Wenzhou first infringed the
CMT in September 2014 rather than in 2010-2013 or in February 2014. Ultimately, the date
when Wenzhou commenced infringement is irrelevant because Converse has failed to show,
through substantial, reliable, or probative evidence, that Wenzhou imported any infringing shoes.

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 PUBLIC VERSION

The Commission, however, finds that there is no evidence that the shoes Wenzhou

imported into the United States for Ositos were infringing. Both OUII and Converse admit that

the import record does not show exactly what products were imported by Wenzhou and there is

no evidence that the importation included infringing products. See OUII Sub. at 92; Comp.

Reply at 73. In particular, the import record describes the footwear Wenzhou exported as

“GENERALLADIES [sic] BOOTS.” CX-1, Ex. 187C (“GENERALLADIES BOOTS” is the

only description of the product that appears in the exhibit). However, there is no dispute that

Wenzhou’s buyer, Ositos, “promotes and sells a wide variety of shoe designs that do not include

the designs of its Accused Products and that do not violate the Asserted Trademarks.” Id., ¶ 437

(citing Ex. 147). For example, exhibit 147 shows many varieties of Ositos shoes for sale,

including ladies’ boots, that do not bear the CMT. Thus, the Commission finds that this record

does not show that Wenzhou imported infringing shoes.

Converse further points to evidence of the sale of an Ositos shoe to show that Wenzhou

imports infringing shoes. On February 26, 2014, Ms. Schrader on behalf of Converse made “a

purchase of Ositos’ Accused Product that, on information and belief, was manufactured by

Wenzhou” from “Fashoutlet via Amazon.com.” Id., ¶ 640 (citing Ex. 23 at ¶ 30, Ex. O-1).57

The country of origin label affixed to the inside tongue of the purchased Ositos’ Accused

Product indicates that it was “Made in China.” Id. (citing Ex. 23 at ¶ 31, Ex. O-2). The

Commission, however, finds that there is no evidence that would support the conclusion that the

purchased Ositos shoe was manufactured and exported by Wenzhou to Ositos. While the Ositos

shoes that were imported were described as “GENERALLADIES BOOTS,” the Ositos shoe

57
The complaint states February 2013, but the cited declaration and relevant exhibits show the
purchase was made on “February 26, 2014.” CX-1, Ex. 23 at ¶ 30.

108 
 PUBLIC VERSION

NEO-13 Hi Top shoe that Converse alleged in the complaint were manufactured by Ouhai. On

January 21, 2014, Converse purchased a pair of “Sprenkle” shoes from AldoShoes.com that

Converse alleged, “on information and belief, was manufactured by Ouhai.” CX-1, ¶ 648.; see

also id., Exs. 45 (photo of Aldo’s Sprenkle shoe) & 48 at ¶ 2, Ex. A-1. In addition, on January

30, 2014, Ms. Schrader purchased “a pair of OPPO ‘NEO-13 Hi Top’ shoes through Sears.com

from seller Beston Shoes” that Converse alleged, “on information and belief, was manufactured

by Ouhai.” Id., ¶ 649, Ex. 23 at ¶ 26, Ex. M-1. The Commission finds, however, that there is no

evidence that would support the conclusion that Ouhai manufactured and imported the Aldo and

OPPO shoes that Converse purchased in January 2014.

Accordingly, the Commission finds that Converse has not shown, through substantial,

reliable, and probative evidence, that Ouhai violated section 337.

f. Conclusion

The Commission finds that Converse has proven infringement by substantial, reliable,

and probative evidence with respect to Defaulting Respondents Foreversun and Dioniso, but not

with respect to Defaulting Respondents Xinya, Wenzhou, and Ouhai. Moreover, the

Commission found that Converse had established that “an industry in the United States” exists

under section 337(a)(3)(A) and (B). ID at 119-26; unreviewed by Comm’n Notice, 81 Fed. Reg.

6888. Accordingly, the Commission finds that Converse has proven a violation of section 337

by substantial, reliable, and probative evidence with respect to Defaulting Respondents

Foreversun and Dioniso, but not with respect to Defaulting Respondents Xinya, Wenzhou, and

Ouhai.59

59
For the reasons discussed above, including in note 9 supra, the Commission rejects Converse’s
claim that there is a section 337 violation by the Active Respondents based on the ’753
trademark.

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 PUBLIC VERSION

E. Remedy, the Public Interest, and Bonding60

As discussed above, the Commission found, by substantial, reliable, and probative

evidence, a violation of section 337 by two Defaulting Respondents, Foreversun and Dioniso.

After considering the record evidence, the parties’ submissions, and the public interest,

the Commission has determined that the appropriate remedy in this investigation is a GEO with

the standard certification provision directed to footwear products that infringe the ’753

trademark. The Commission has also determined to issue CDOs against Defaulting Respondents

Foreversun and Dioniso with respect to the ’753 trademark. The Commission has further

determined to set the bond during the period of Presidential review pursuant to 19 U.S.C. 1337(j)

in the amount of one hundred percent (100%) of the entered value of the imported articles that

are subject to the GEO.

1. Remedy

a. General Exclusion Order

Converse seeks a GEO that excludes footwear products that infringe the ’753 trademark

from entry into the United States. Comp. Rmdy at 24. OUII agrees a GEO is appropriate in the

event a violation is found. OUII Sub. at 98-99. Other than arguing that a GEO should not issue

if the ’753 trademark is invalid, the Active Respondents otherwise do not dispute the ID’s

findings with respect to the need for a GEO. See generally Resp. Rmdy at 1-3; Resp. Rmdy

Reply at 2 (“If certain criteria are met, the Commission may issue a General Exclusion Order.”).

However, the Active Respondents and OUII advocate for a certification provision in the GEO.

60
The Commission refers herein to the ALJ’s recommended determination (“RD”) from the
original investigation and the parties’ submissions on remedy and bonding in response to the
Commission’s Notice of Review. See RD at 133-143; 85 Fed. Reg. 8322-23. The RID did not
provide any recommendations on remedy or bonding. RID at 88.

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 PUBLIC VERSION

chain. See RD at 135 (citing CIB at 127-131; CX-229C at Q/A 165-170, 292, 297-300); Comp.

Rmdy at 8-12 (citations omitted); Paper Towel, Inv. No. 337-TA-718, RD at 8-9 (July 12, 2011)

(A “pattern of violation [under 19 U.S.C. § 1337(d)(2)(B)] may be explained, in whole or in part,

by the business conditions found . . . relating to circumvention of a limited exclusion order.”),

Comm’n Op. at 7, 15-16. Converse has shown infringement by Defaulting Respondents

Foreversun and Dioniso, identified numerous nonrespondents that also may infringe the ’753

trademark, and terminated twenty-three respondents from the investigation based on settlement

and/or consent agreements. See Comp. Rmdy at 11-12 (citing CX-229C at Q/A 149-159, 184-

190; CDX-229C.0003; CDX-229.0007C; CX-1561C at 85:2-14; CX-1558C at 47:6-20); 81 Fed.

Reg. 42377, 42378 (June 29, 2016). Moreover, Converse has engaged in extensive enforcement

activities, but despite its efforts, infringing and counterfeit products continue to be imported into

the United States. See RD at 135 (citing, e.g., CX-245C at Q/A 41-53; CDX-00229.0010-

0011C; CX-11286C; CX-00229C at Q/A 212-228); Comp. Rmdy at 13-15 (citations omitted).

There is also evidence of the difficulty in identifying the source of infringing products

because of the complex supply chain relationships in which numerous third-party vendors and

foreign agents or trading companies operate as intermediaries between the abundant foreign

manufacturers and U.S. distributors and retailers. See RD at 135 (citing CX-00229C at 182-195,

261-289; CDX-229.0025; CX-00245 at Q/A 61); Comp. Rmdy at 17-19 (citations omitted).

Indeed, the evidence shows that the trading companies who sell the infringing products are

mostly selling agents or shell companies with a mail drop under fictitious names, emails, and

phone numbers. See RD at 135 (citing CX-00245 at Q/A 61). Moreover, infringing shoes

imported by non-respondent suppliers are often “packaged in unmarked, generic packaging” that

does not identify the manufacturer. Comp. Rmdy at 20 (citing CX-229C at Q/A 263-65, 273).

114 
 PUBLIC VERSION

CDOs directed against each of the Defaulting Respondents. Comp. Rmdy at 32. Converse

asserts that the evidence provided in the complaint supports an inference that each Defaulting

Respondent was selling infringing products from inventories in the United States. Id. OUII

submits that Converse has waived its arguments for CDOs against the Defaulting Respondents

because it never raised them until now. OUII Reply at 47. Notwithstanding waiver, OUII argues

that the evidence does not support issuing CDOs against the Defaulting Respondents. Id.

The Commission has authority to issue a CDO directed to entities found to violate section

337, ordering them to cease and desist from engaging in the unfair methods or acts involved. 19

U.S.C. § 1337(f)(1).63 The Commission has generally issued CDOs when, with respect to the

imported infringing products, respondents maintain commercially significant inventories in the

United States or have significant domestic operations that could undercut the remedy provided

by an exclusion order.64 See, e.g., Certain Table Saws Incorporating Active Injury Mitigation

Technology & Components Thereof (“Table Saws”), Inv. No. 337-TA-965, Comm’n Op. at 4-6

(Feb. 1, 2017); Certain Integrated Repeaters, Switches, Transceivers, & Prods. Containing

Same (“Integrated Repeaters”), Inv. No. 337-TA-435, Comm’n Op. at 27 (Aug. 16, 2002)

63
Converse’s request for CDOs against the Defaulting Respondents is analyzed under section
337(f)(1) and not section 337(g)(1). Section 337(f)(1) provides that in addition to, or in lieu of,
the issuance of an exclusion order under subsections (d) or (e), the Commission may issue a
cease and desist order as a remedy for violation of section 337. 19 U.S.C. § 1337(f)(1); see
Certain Pocket Lighters, Inv. No. 337-TA-1142, Comm’n Op. at 16-17 (July 13, 2020). As
discussed earlier, Converse’s request for a general exclusion from entry of articles is analyzed
under section 337(d), not (g)(1).
64
When the presence of infringing domestic inventory or domestic operations is asserted as the
basis for a CDO under section 337(f)(1), Commissioner Schmidtlein does not adopt the view that
the inventory or domestic operations needs to be “commercially significant” in order to issue the
CDO. See, e.g., Certain Magnetic Tape Cartridges and Components Thereof, Inv. No. 337-TA-
1058, Comm’n Op. at 65, n.24 (Mar. 25, 2019); Table Saws, Comm’n Op. at 6-7, n.2 (Feb. 1,
2017). In Commissioner Schmidtlein’s view, the presence of some infringing domestic inventory
or domestic operations, regardless of its commercial significance, provides a basis to issue a
CDO. Id.
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(issuing CDOs where respondents maintain a “commercially significant” domestic inventory of

subject articles that have already been imported, in order to prevent distribution of violating

articles in the United States). Complainants bear the burden on this issue. “A complainant

seeking a cease and desist order must demonstrate, based on the record, that this remedy is

necessary to address the violation found in the investigation so as to not undercut the relief

provided by the exclusion order.” Table Saws, Comm’n Op. at 5 (citing Integrated Repeaters,

Comm’n Op. at 27); see also H.R. REP. No. 100-40, at 160.

With respect to defaulting foreign respondents, the Commission has declined to presume

the presence of domestic inventories or other business operations in the United States that would

support the issuance of a cease and desist order. Certain Mobile Device Holders and

Components Thereof, Inv. No. 337-TA-1028, Comm’n Op. at 24 (Mar. 22, 2018). Rather, the

Commission has looked to “where the complaint alleges facts showing that a defaulting foreign

respondent either maintains domestic inventories of subject products or engages in extensive

domestic activities with respect to the subject products[.]” Certain Digital Photo Frames and

Image Display Devices and Components Thereof (“Digital Photo Frames”), Inv. No. 337-TA-

807, Comm’n Op. at 9 (Mar. 27, 2013); see also Certain Abrasive Products Made Using a

Process for Making Powder Preforms and Products Containing Same, lnv. No. 337-TA-449,

Comm’n Op., 2002 WL 31093610, at *4 (May 9, 2002) (directing a CDO to a foreign respondent

where the foreign respondent’s agent maintained a commercially significant inventory of

infringing product in the United States). For example, the Commission has previously issued

CDOs directed against foreign defaulting respondents where complainant alleged internet sales

and submitted evidence of sales to U.S. customers and CBP’s detainment of shipments to U.S.

customers. Digital Photo Frames, Inv. No. 337-TA-807, Comm’n Op. at 9; see Certain Toner

118 
 PUBLIC VERSION

Cartridges and Components Thereof, Inv. No. 337-TA-829, Comm’n Op. at 10-11 (Jul. 29,

2013); Certain Birthing Simulators and Associated Systems, Inv. No. 337-TA-759, Comm’n

Notice (Aug. 29, 2011); Certain Automotive Vehicles and Designs Therefor, Inv. No. 337-TA-

722, Comm’n Notice (Mar, 10, 2011).

As stated above, the Commission finds that Converse has proven a violation of section

337 with respect to Defaulting Respondents Foreversun and Dioniso, but not with respect to

Defaulting Respondents Xinya, Wenzhou, and Ouhai. The Commission finds the record

supports the issuance of a CDO against foreign respondents Foreversun and Dioniso.

Specifically, the record shows that Foreversun sold and imported infringing products on the

internet through its own domestic website. CX-1, ¶ 492, Ex. 165. Foreversun’s website

identified “America” as a geographic area where it “mainly export[s]” its footwear products. Id.,

¶ 643, Ex. 162. Furthermore, in February 2014, the record shows that an attorney for Converse

observed Foreversun promoting shoes bearing the CMT at the World Shoes Accessories trade

show in Las Vegas, Nevada. Id., Ex. 189 at ¶ 4, Ex. B. In view of this record evidence, the

Commission finds that Foreversun conducts sufficient domestic activities with respect to the

infringing products to warrant imposition of a CDO. The record also shows that Dioniso sold

and imported infringing products in the United States via online sales through ShopKitson.com.

See id., ¶¶ 187, 192-193, 625, Exs. 39 and 40. The Commission has previously found these

types of activities establish sufficient domestic ties to warrant imposition of a CDO. See Digital

Photo Frames, Inv. No. 337-TA-807, Comm’n Op. at 10-11. In view of the above, the

Commission determines to issue a CDO against foreign respondents Dioniso and Foreversun but

119 
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not against foreign respondents Xinya, Wenzhou, and Ouhai.65, 66

65
Commissioner Schmidtlein concurs in part and dissents in part from Part IV(E)(1)(b) of the
Commission’s opinion. Specifically, Commissioner Schmidtlein concurs with issuing CDOs
against Dioniso and Foreversun, and she dissents from the Commission’s decision to withhold
CDOs against Xinya, Ouhai, and Wenzhou. With respect to these five respondents,
Commissioner Schmidtlein finds that the requested CDO relief is governed by section 337(g)(1),
rather than section 337(f)(1), because each of these respondents satisfy the conditions of
subsections (A) through (E) of section 337(g)(l). See Order No. 58 (Feb. 23, 2015) (finding
Dioniso, Foreversun, and Xinya in default for failing to respond to the complaint and notice of
investigation), not reviewed, Notice (Mar. 12, 2015); Order No. 106 (May 8, 2015) (finding
Ouhai and Wenzhou in default for failing to respond to the complaint and notice of
investigation), not reviewed, Notice (June 2, 2015). In prior investigations, Commissioner
Schmidtlein has explained her view that absent public interest considerations to the contrary the
“shall, upon request, issue” language in section 337(g)(l) does not grant the Commission
discretion to decline to issue a requested CDO when the conditions of subsections (A) through
(E) are satisfied. See Certain Industrial Automation Systems and Components Thereof Including
Control Systems, Controllers, Visualization Hardware, Motion and Motor Control Systems,
Networking Equipment, Safety Devices, and Power Supplies, Inv. No. 337-TA-1074, Comm’n
Op., Dissenting Views of Commissioner Schmidtlein (April 23, 2019). Consistent with that
view, Commissioner Schmidtlein finds that the Commission is required to issue the requested
CDOs against Dioniso, Foreversun, Xinya, Ouhai, and Wenzhou.
66
Commissioner Karpel would issue CDOs directed to all five defaulting respondents: Dioniso,
Foreversun, Xinya, Ouhai, and Wenzhou. For the reasons noted in Certain Powered Cover
Plates, Inv. No. 337-TA-1124, Comm’n Op. at 22-23 n.20 (June 11, 2020) and in Certain Pocket
Lighters, Inv. No. 337-TA-1142, Comm’n Op. at 19-20 n.15 (July 13, 2020), Commissioner
Karpel does not consider the Commission’s determination to issue a GEO under section
337(d)(2) to direct that the requested CDOs with respect to the five defaulting respondents be
considered under section 337(f)(1). Rather, she considers section 337(g)(1) is the appropriate
authority for the issuance of CDOs as to the defaulting respondents because the criteria for
issuance of CDOs under subsection 337(g)(1)(A)-(E) are met as to these respondents. Each of
these respondents was named in the complaint and each was served with the complaint and
notice of investigation. See Order No. 58 (Feb. 23, 2015) (finding Dioniso, Foreversun, and
Xinya in default for failing to respond to the complaint and notice of investigation), not reviewed
by Notice (Mar. 12, 2015); Order No. 106 (May 8, 2015) (finding Ouhai and Wenzhou in default
for failing to respond to the complaint and notice of investigation), not reviewed by Notice (June
2, 2015). The ALJ issued show cause orders ordering these respondents to show cause why they
should not be held in default for failing to respond to the complaint and notice of investigation.
See id. None of these respondents filed responses to the show cause orders. Id. These findings
satisfy subsections 337(g)(1)(A)-(D). Converse requested CDOs limited to each of the
defaulting respondents (Comp. Rmdy at 32), thus satisfying subsection 337(g)(1)(E). Given that
subsections 337(g)(1)(A)-(E) are satisfied and Converse requested CDOs directed to these
respondents, the statute directs the Commission to issue the requested CDOs, subject to
consideration of the public interest. The public interest factors as detailed in Part IV(E) infra do

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2. Public Interest

Before issuing any remedial order, the Commission must “consider[] the effect of such

exclusion upon the public health and welfare, competitive conditions in the United States

economy, the production of like or directly competitive articles in the United States, and United

States consumers.” 19 U.S.C. § 1337(d)(1); see also 19 U.S.C. §§ 1337(f)(1), (g)(1). “[T]he

statute does not require the Commission to determine that a remedial order would advance the

public interest factors but rather requires the Commission to consider whether issuance of such

an order will adversely affect the public interest factors.” Certain Loom Kits for Creating Linked

Articles, Inv. No. 337-TA-923, Comm’n Op., 2015 WL 5000874, at *9 (Jun. 26, 2015) (“Loom

Kits”) (citation omitted).

The record in this investigation contains no evidence that a remedial order would

adversely affect the public health and welfare, competitive conditions in the United States

economy, the production of like or directly competitive articles in the United States, or United

States consumers. See 19 U.S.C. §§ 1337(d)(1), (f)(1). The Active Respondents did not present

not support a finding that the remedial orders in this investigation would be contrary to the public
interest. Accordingly, Commissioner Karpel would issue CDOs against Dioniso, Foreversun,
Xinya, Ouhai, and Wenzhou under section 337(g)(1). The fact that Converse failed to establish a
violation of section 337 by substantial, reliable and probative evidence as to the articles imported
by Xinya, Wenzhou, and Ouhai that the complaint alleges are infringing products does not affect
the application of section 337(g)(1). Section 337(g)(1) directs the Commission to presume the
facts alleged in the complaint to be true and thus does not require substantial, reliable, and
probative evidence to substantiate the facts alleged. Converse’s complaint alleged facts
supporting all elements of a violation, including importation and infringement of the ‘753
registered trademark with respect to each defaulting respondent, including Xinya, Wenzhou, and
Ouhai, and section 337(g)(1) directs the Commission to presume these facts to be true and issue
the requested remedy (subject to the public interest). Xinya, Wenzhou, and Ouhai had the
opportunity to appear before the Commission to contest the complaint allegations and argue
against issuance of CDOs but did not do so.
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any public interest arguments in their submissions.67 OUII asserts the public interest factors do

not preclude the issuance of remedial orders in this investigation. OUII Sub. at 107-109.

Converse argues that “[m]ultiple section 337 investigations have involved footwear and

the Commission has never found footwear products to implicate public interest concerns.”

Comp. Rmdy at 40-41 (citations omitted). Converse asserts that there is no evidence that the

remedial orders “will have an adverse impact on competitive conditions in the U.S. economy”

because the “infringing footwear products represent a very small subset of the U.S. shoe market

and are limited to shoes bearing the CMT.” Id. at 41. Converse also asserts that the requested

remedial orders will not adversely affect competitive conditions, the production or availability of

like or directly competitive articles, or consumers in the U.S. because “consumers will continue

to have access to a vast variety of non-infringing footwear at all price points.” Id. at 41-42.

Moreover, Converse submits that it “has the capacity to meet U.S. consumer demand for

footwear products that bear the CMT” and its competitors can supply the market with

noninfringing footwear products. Id. at 42-43.

With respect to the public health and welfare, it is undisputed that the footwear products

at issue in this investigation are not essential to and do not implicate any public health, safety, or

welfare concerns. Moreover, the evidence does not establish that the remedial orders would

67
In response to the Commission’s November 18, 2015 Notice of Request for Statements on the
Public Interest, one third-party, Elan Polo, Inc. (“Elan”), submitted comments. 80 Fed. Reg.
73210 (Nov. 24, 2015); EDIS Doc ID 571408 (“Elan Sub.) at 1 (Dec. 23, 2015). Elan argued a
GEO will have “adverse and unpredictable consequences for the U.S. footwear industry” because
“it is not clear what designs are permissible and what are not” given the “broad and uncertain
scope of the ALJ’s infringement findings.” Elan Sub. at 1. OUII noted that Elan has a business
relationship with former respondent Walmart. OUII Sub. at 106 n.18. As discussed above, the
Commission finds the requirements of section 337(d)(2) for issuance of a GEO have been
satisfied with respect to the ’753 trademark. There are procedures at both the Commission and
CBP for Elan to obtain a ruling as to whether any particular product is within the scope of the
exclusion order.
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negatively affect the competitive conditions in the U.S. footwear market, decrease the

availability of products, or greatly increase costs. As the ID noted, “[t]he evidence shows that

numerous commercial alternatives exist.” ID at 61. Indeed, as Converse states in its submission,

“consumers will continue to have access to a vast variety of non-infringing footwear at all price

points” and it “has the capacity to meet U.S. consumer demand for footwear products that bear

the CMT” and its competitors can supply the market with noninfringing footwear products.

Comp. Rmdy at 41-43. Accordingly, based on the record evidence, the Commission finds that

issuing relief would not harm the public interest, including the public health and welfare, the

competitive conditions in the United States economy, the production of like or directly

competitive products in the United States, and United States consumers.

3. Bonding

During the 60-day Presidential review period under 19 U.S.C. § 1337(j), “articles

directed to be excluded from entry under subsection (d) . . . shall . . . be entitled to entry under

bond prescribed by the Secretary in an amount determined by the Commission to be sufficient to

protect the complainant from any injury.” See 19 U.S.C. § 1337(j)(3). “The Commission

typically sets the bond based on the price differential between the imported infringing product

and the domestic industry article or based on a reasonable royalty. However, where the available

pricing or royalty information is inadequate due to the default of the respondent, the bond may

be set at one hundred (100) percent of the entered value of the infringing product.” Loom Kits,

2015 WL 5000874, at *11 (citations omitted).

With respect to the Defaulting Respondents, the ALJ recommended a bond of one

hundred percent (100%) of entered value during the period of Presidential review. RD at 142.

Converse and OUII agree with the RD’s recommendation that the Defaulting Respondents be

required to post a bond in the amount of 100 percent per pair of the accused products during the
123 
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entry of footwear products that infringe the ’753 trademark; and (2) CDOs prohibiting

Defaulting Respondents Foreversun and Dioniso from further importing, selling, and distributing

infringing products in the United States. Finally, the Commission determines that a bond in the

amount of one hundred percent (100%) of the entered value (per pair) of the infringing products

is required to permit temporary importation during the period of Presidential review.

By order of the Commission.

Lisa R. Barton
Secretary to the Commission
Issued: September 24, 2020

125 
CERTAIN FOOTWEAR PRODUCTS Inv. No. 337-TA-936
(Remand)

PUBLIC CERTIFICATE OF SERVICE

I, Lisa R. Barton, hereby certify that the attached Opinion, Commission has been served
via EDIS upon the Commission Investigative Attorney, Sarah J. Sladic, Esq., and the following
parties as indicated, on September 24, 2020.

Lisa R. Barton, Secretary

U.S. International Trade Commission
500 E Street, SW, Room 112
Washington, DC 20436

On Behalf of Complainant Converse Inc.:

V. James Adduci, II, Esq. ☐ Via Hand Delivery

ADDUCI, MASTRIANI & SCHAUMBERG, LLP ☐ Via Express Delivery
1133 Connecticut Avenue, N.W., 12th Floor ☐ Via First Class Mail
Washington, DC 20036
☒ Other: Email Notification of
Email: [email protected]
Availability for Download

On Behalf of Respondent New Balance Shoes, Inc.:

Mark Puzella, Esq. ☐ Via Hand Delivery

ORRICK, HERRINGTON & SUTCLIFFE LLP ☐ Via Express Delivery
222 Berkeley Street
☐ Via First Class Mail
Boston, Massachusetts 02116
☒ Other: Email Notification of
Email: [email protected]
Availability for Download

On Behalf of Respondent Skechers U.S.A., Inc.:

Barbara A. Murphy, Esq. ☐ Via Hand Delivery

FOSTER, MURPHY, ALTMAN & NICKEL, PC ☐ Via Express Delivery
1150 18th Street NW Suite 775 ☐ Via First Class Mail
Washington, DC 20036
☒ Other: Email Notification of
Email: [email protected]
Availability for Download
CERTAIN FOOTWEAR PRODUCTS Inv. No. 337-TA-936

Certificate of Service – Page 2

On Behalf of Respondent Highline United LLC d/b/a Ash Footwear

USA:

Gerard P. Norton, Esq. ☐ Via Hand Delivery

FOX ROTHSCHILD LLP ☐ Via Express Delivery
Princeton Pike Corporate Center ☐ Via First Class Mail
997 Lennox Drive, Building 3
☒ Other: Email Notification of
Lawrenceville, NJ 08648-2311
Availability for Download
Email: [email protected]

Respondents:

Dioniso SRL ☐ Via Hand Delivery

ViaPievaiola 166-f2 ☐ Via Express Delivery
06132 Perugia
☐ Via First Class Mail
Italy
☒ Other: Service to Be
Completed by Complainants

Shenzhen Foreversun Industrial Co., Ltd (a/k/a Shenzhen ☐ Via Hand Delivery
Foreversun Shoes Co., Ltd) Room 1109-1112 F l 1 ☐ Via Express Delivery
Yousong Science & Technology Bldg., 1 Road of Donghuan,
☐ Via First Class Mail
st

Longhua Bao'an, Shenzhen, Guangdong Province

China ☒ Other: Service to Be
Completed by Complainants

Fujian Xinya I&E Trading Co. Ltd., Floor 4, Building A, ☐ Via Hand Delivery
China Shoes Capital ☐ Via Express Delivery
ChendaiTown, Jinjiang, Fujian Province
☐ Via First Class Mail
China
☒ Other: Service to Be
Completed by Complainants

Zhejiang Ouhai International Trade Co. Ltd. ☐ Via Hand Delivery

Building B, Jinzhou Building ☐ Via Express Delivery
Wenzhou Avenue,
☐ Via First Class Mail
Wenzhou Zhejiang Province
China 325000 ☒ Other: Service to Be
Completed by Complainants

Wenzhou Cereals Oils & Foodstuffs Foreign Trade Co., Ltd. ☐ Via Hand Delivery
24 Floor, International Trade Centre
th
☐ Via Express Delivery
236 Liming West Road, Wenzhou
☐ Via First Class Mail
Zhejiang Province
China 325003 ☒ Other: Service to Be
Completed by Complainants
CERTAIN FOOTWEAR PRODUCTS Inv. No. 337-TA-936

Certificate of Service – Page 3