Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA807292 Filing date: 03/15/2017 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 92065219 Party Plaintiff Highline United, LLC Correspondence LEONARD N BUDOW Address FOX ROTHSCHILD LLP 997 LENOX DRIVE BLDG 3 LAWRENCEVILLE, NJ 08648-2311 UNITED STATES [email protected], [email protected] Submission Motion to Suspend for Civil Action Filer's Name Michael Leonard Filer's e-mail [email protected] Signature /michael leonard/ Date 03/15/2017 Attachments Highline_s Motion to Suspend _482 Reg. proceeding.pdf(214864 bytes ) EXHIBIT 1 - Highline_s Petition for Cancellation of 112 Registra- tion.pdf(2606792 bytes ) Segment 001 of EXHIBIT 2 - Converse_s ITC Complaint.pdf(5226274 bytes ) Segment 002 of EXHIBIT 2 - Converse_s ITC Complaint.pdf(3794581 bytes ) EXHIBIT 3 - Converse Petition for Review CAFC.PDF(49845 bytes ) EXHIBIT 4 - Order granting HU Liquidation_s Motion for Leave to Inter- ven.pdf(80734 bytes ) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
In The Matter Of Registration No. 4,065,482
For The Design Mark:
Registered: December 6, 2011
HIGHLINE UNITED, LLC, Cancellation No. 92065219
Petitioner,
v.
CONVERSE, INC.,
Registrant.
PETITIONER HIGHLINE UNITED, LLC’S MOTION TO SUSPEND THE PROCEEDING PENDING A FEDERAL CIRCUIT APPEAL
I. INTRODUCTION
Pursuant to TBMP § 510.02(a), Highline United, LLC (“Highline” or “Petitioner”) hereby moves to suspend this proceeding. HU Liquidation, LLC (f/k/a Highline United,
LLC (“Highline United”)) and Registrant Converse, Inc. (“Converse” or “Registrant”) are
presently litigating an appeal in the United States Court of Appeals for the Federal Circuit on a mark that is very similar to the mark at issue here. Because the Federal Circuit’s decision in that appeal is likely to have significant bearing on the issues in this proceeding, a suspension of this proceeding pending the disposition of the Federal Circuit appeal is warranted.
II. GOOD FAITH ATTEMPT TO MEET AND CONFER
On 13 March 2017, counsel for Highline United, LLC sought Converse’s position as to whether Converse would be opposing the instant motion, as Converse refused to provide its consent to Highline’s prior request to suspend related Cancellation proceeding no.
92064906 involving Registration No. 4,062,112 (the “‘112 Registration”). Later that same day, counsel for Converse confirmed that Converse expects to take the same position with respect to the instant cancellation proceeding. Therefore, Highline is bringing this motion because Converse has declined to consent to the suspension of the instant proceeding.
III. BACKGROUND
A. The ‘482 And ‘753 Registrations Are Very Similar
Converse is the owner of Registration No. 4,065,482 (the “‘482 Registration”), which is at issue in this proceeding. Converse is also the owner of Registration No.
4,398,753 (the “‘753 Registration”), which was invalidated by the International Trade
Commission (the “ITC” or the “Commission”) in a case involving both Highline United and
Converse.
Both the ‘753 Registration and the ‘482 Registration purport to claim trademark rights in certain design elements of the Chuck Taylor All-Star sneaker sold by Converse
(and as discussed in the Petition to Cancel, numerous other shoe companies for the past eighty years). Notably, the ‘482 Registration shares several important common elements
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with the ‘753 Registration, as can be seen at a glance from a comparison of the marks shown in the following table:
Drawing from ‘482 Registration Drawing from ‘753 Registration
These common elements include a toe cap (which the ‘482 Registration refers to as a
“raised” and “protruding” “convex rubber toe cap”); a multi-layered toe bumper featuring diamonds and line patterns (which the ‘482 Registration refers to as a “multi-patterned rubber toe strip” with “four layers of bands featuring intricate and distinct patterns of three- dimensional diamonds and lines”); and two midsole stripes (which the ‘482 Registration refers to as “double rand stripes” comprising “two parallel horizontal lines run along the rubber outsole of the shoe . . . “) (collectively, the “Toe Cap, Toe Bumper, and Midsole
Stripe Combination”).1
The ‘482 Registration also features five additional elements not claimed in the ‘753
Registration: (1) an “ankle patch…with a star in the center”; (2) “two round brushed steel
1 In its application that resulted in the ‘753 Registration, Converse affirmatively claimed the prior ‘482 Registration, as required by 37 C.F.R. § 2.36 (“Prior registrations of the same or similar marks owned by the applicant should be identified in the application.”).
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grommets . . . in a horizontal line above the inside medial arch of the shoe”; (3) “brushed metal eyestay grommets”; (4) “double stitching and box-like stitch along the upper”; and
(5) “top line collar throat shape” (collectively, the “Additional Elements”).
B. The ITC Determined That The ‘753 Registration Is Invalid
As set forth in detail in the Petition to Cancel, Converse sued Highline United on the
‘753 Registration in the ITC. See Ex. 1 (Pet. to Cancel), at 15-16, ¶¶ 16-17. After exhaustive discovery, a lengthy trial, as well as extensive post-trial briefing, the Commission concluded that, among other things, “the ‘753 trademark is invalid.” Id. at Ex. 1 (Pet. to
Cancel, Ex. A: Commission Opinion, USITC Inv. No. 337-TA-936), at 19.
Notably, Converse did not assert the ‘482 Registration in the ITC proceeding.
Instead, Converse asserted only the ‘753 Registration, arguing that it had a “near century of substantially exclusive use” of the Toe Cap, Toe Bumper, and Midsole Stripe Combination.
Ex. 2 (Converse Inc.’s Complaint, USITC Inv. No. 337-TA-936), at 40, ¶ 101. As set forth in detail in the Petition to Cancel, however, the Commission determined that the Toe Cap,
Toe Bumper, and Midsole Stripe Combination lacks secondary meaning and had been in
“extensive use by multiple third parties” for eight decades. Ex. 1 (Pet. to Cancel, Ex. A:
Commission Opinion, USITC Inv. No. 337-TA-936), at 26.
C. The ITC Decision Invalidating The ‘753 Registration Is On Appeal
Converse appealed the Commission’s decision invalidating the ‘753 Registration to the United States Court of Appeals for the Federal Circuit. Converse Inc. v. International
Trade Commission, No. 16-2497 (Fed. Cir., filed 16 Aug. 2016). See Ex. 3 (Converse’s Pet. for Review, Converse Inc. v. International Trade Commission, No. 16-2497, Dkt. No. 1).
HU Liquidation, LLC has intervened in the appeal, which is currently pending. See Ex. 4
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(Order Granting HU Liquidation, LLC’s Unopposed Motion for Leave to Intervene,
Converse Inc. v. International Trade Commission, No. 16-2497, Dkt. No. 33).
Of particular relevance to this proceeding, Converse is appealing the ITC’s finding that the Toe Cap, Toe Bumper, and Midsole Stripe Combination lacks secondary meaning based on survey evidence. See Ex. 3 (Converse’s Pet. for Review, Converse Inc. v.
International Trade Commission, No. 16-2497, Dkt. No. 1). In addition, Converse is appealing the ITC’s finding that: “[b]ased on the foregoing evidence of extensive use by multiple third parties of the [design recited in the ‘753 Registration] for the last eighty years, the Commission finds that the average consumer prior to the first alleged infringement in
2003 was likely aware of this third-party use, which would lead them to associate the
[design recited in the ‘753 Registration] with multiple sources, and therefore substantially diminishes any secondary meaning in Converse’s mark. . . . [T]he record evidence here does not just show random, irrelevant third-party use, but third party use of the same mark to promote the same goods to the same consumer class.” Ex. 1 (Pet. to Cancel, Ex. A:
Commission Opinion, USITC Inv. No. 337-TA-936), at 26.
IV. ARGUMENT
TBMP § 510.02(a) provides: “Whenever it comes to the attention of the Board that a party or parties to a case pending before it are involved in a civil action which may have a bearing on the Board case, proceedings before the Board may be suspended until final determination of the civil action.” The civil action “does not have to be dispositive of the
Board proceeding to warrant suspension, it need only have a bearing on the issues before the
Board.” New Orleans Louisiana Saints LLC and NFL Properties v. Who Dat?, Inc., 99
U.S.P.Q. 2d 1550 (T.T.A.B. 2011).
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The appeal before the Federal Circuit and the instant Cancellation proceeding involve common factual and legal issues. On appeal, the Federal Circuit will decide the question of whether the ‘753 Registration, which comprises the Toe Cap, Toe Bumper, and
Midsole Stripe Combination, is invalid. Given the fact that the Toe Cap, Toe Bumper, and
Midsole Stripe Combination are central elements of the mark claimed in the ‘482
Registration, the Federal Circuit’s decision will have a significant bearing on the Board’s analysis of whether to cancel the ‘482 Registration in whole or in part. For example:
Confirmation by the Federal Circuit that the Commission appropriately relied
upon “evidence of extensive use by multiple third parties of the [Toe Cap,
Toe Bumper, and Midsole Stripe Combination] for the last eighty years” in
finding no secondary meaning would have a significant bearing here. Most
of these instances of third party use also apply to the ‘482 Registration.
A finding that the ‘753 Registration (and therefore the Toe Cap, Toe Bumper,
and Midsole Stripe Combination) is invalid would have a significant bearing
on the secondary meaning of all or most of the Additional Elements of the
‘482 Registration.
Finally, if the Federal Circuit were to reverse the Commission opinion and
find that the Toe Cap, Toe Bumper, and Midsole Stripe Combination of the
‘753 Registration has secondary meaning (which would be contrary to the
evidence and the law), such a decision would necessarily have a significant
bearing on the validity of the ‘482 Registration, which includes the Toe Cap,
Toe Bumper, and Midsole Stripe Combination.
Accordingly, it would benefit the Board and the parties to await the outcome of the appeal before spending additional time and money in this forum.
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V. CONCLUSION
For the reasons set forth herein, Petitioner respectfully requests that the Board suspend this proceeding pending the Federal Circuit appeal of the ITC decision.
Respectfully submitted,
HIGHLINE UNITED LLC
Date: 15 March 2017 By: _/michael leonard/______Leonard N. Budow Michael J. Leonard Austen C. Endersby Fox Rothschild LLP 997 Lenox Drive, Bldg. 3 Lawrenceville, New Jersey 08648-2311 212.878.7902 (direct) 609.896.1469 (fax) [email protected] [email protected]
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CERTIFICATE OF SERVICE
I hereby certify that a true copy of the foregoing Petitioner Highline United, LLC’s
Motion to Suspend the Proceeding Pending A Federal Circuit Appeal was served on
Registrant on this 15th day of March 2017 by sending same via email to:
Helen H. Minsker Banner & Witcoff, Ltd. 10 South Wacker Drive Chicago, Illinois 60606 [email protected] [email protected] [email protected] Attorneys for Registrant
_/michael leonard/______
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EXHIBIT 1 m Fox RothschildLLP ATIORNEYS AT LAW
2000 Market Street, 20th Floor Philadelphia, PA 19103-3222 Tel 215.299.2000 Fax 215.299.2150 www.foxrothsch1ld.com
MICHAEL J. LEONARD Di rect Dial: 215-299-2085 Email Add ress: MLeonarcl o Fox Rothsc hil d.com
December 5, 2016
EXPRESS MAIL
A TT : Trademark Trial and Appeal Board Commissioner fo r Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
Re: Highline United, LLC, Petitioner v. Converse, Inc., Res pondent Express Mail Mailing Label No. EF 115716228 US
Dear Sir/Madam:
Enclosed is a Petition fo r Cancellation fil ed on behalf of Highline United, LLC, Petitioner, against Converse, Inc., Respondent, with regard to U.S. Registration No. 4,065,482.
This Petition is being fil ed by Express Mail, as the USPTO Website is currently unavailable. Please charge the $300 filing fee to our deposit account, No. 50-1943 .
Please contact the undersigned with any questi ons.
Sincerely, ｾ＠
Michael J. Leonard
Enclosures
11 11111 1111111111111111111111111111111111111111 111111111 1111 12·05·2016 u s Patent & TMOf C/ TM Mall Rcpt Ot ., . , A Pennsylvania Limited L1ab1l1ty Partnership
California Colorado Connecticut Delaware District of Columbia Florida Illinois Minnesota Nevada New Jersey New York Pennsylvania Texas ) TTAB
THE UNITED STATES PATE T AND TRADEMARK OFFlCE BEFORE THE T RADEMARK TRIAL A D APPEAL BOARD
ｾ ＶＳＵ［＼ｦＵＷ＠ H IGHUNE U ITED, LLC, U.S. Reg. No . 4,065,482 - IS'/
Petitioner Mark: Shoe Design
Cancellation o. v.
CO VERSE, INC.,
Respondent.
PETITION FOR CANCELLATION
Highline United, LLC (hereinafler "Highline'' or "Petitioner") a Limited Liability
Company organized and existing under the laws of the state of Delaware, having an address at
980-990 Washington Street, Suite 216, Dedham Mas ·achu:etts 02026 believes that it is or will
be damaged by the continued registration of the regist ·red trade dress mark identified above and
hereby petitions to cancel the registration. As grounds therefor, it is all · ged as follows:
I. Petitioner is a U.S. importer and distributor of men's and women's footwear.
2. Re:pondenl, Converse, Inc. ("'Converse'') is, upon information and belie!: a U.S.
and international manufacturer, distributor, wholesaler and retailer of athletic clothing, apparel
and footwear.
3. Respondent is the owner of record of U.S. Registration o. 4,065,482, comprising
the purported trade dress design of an athletic shoe (the "'482 Design"), registered on December
6 2011 with the United States Patent and Trademark Office (the "USPTO") and covering goods
de. cribed as "athletic footwear' in International Class 25 ("Respondent's Goods").
12/08/2016 SGNI"1 00000005 501943 4065482 ｾＱ＠ ｲｃＺＶＴｾＱ＠ lllllll lllll llll llllllllllllllllllllllllllllllllllllllll /111 12·05·2016 u s Patent & TMOtC/ Tf'1 Mall RCPi Dt # 11 4. Specifically, the '482 De. ign is characterized in the Certificate of Registration as follows:
The mark con ists of the three di men, ional trade dres design of the iconic and clas. ic Chuck Taylor All Star basketball shoe for which the fo !lowing primary features are claimed:
(a) Multi-Patterned Rubber Toe Strip. The rubber Loe strip has four layers of bands featuring intricate and distinct patterns of three-dimensional diamonds and lines.
(b) Ankle Patch on the Jnside Ankle. The round patch design with double dashed line just inside the boundary of the circular patch, with a star in the center.
(c) Double Rand Stripes. Two parallel horizontal lines run along the rubber outsole of the shoe. The uppermost contrasting stripe runs along the edge of the rubber outsole around the entire circumference of the shoe, including on the toe cap. The second contrasting stripe appears midway along the rubber outsole and runs from the front edge of the license plate heel tab to the back edge of the rubber toe bumper.
(cl) Brushed Metal Grommets .in Medial Side Arch. Two round brushed teel grommets are placed in a horizontal line above the in. ide medial arch of the shoe.
(e) Brushed l\tletal Eye:tay Grommets. A . eries of equally-spaced wide, round brushed metal eyestay grommet are part of the lacing system instead of hooks loops, D-rings, or other holding and lacing mechanisms.
(f) Convex Rubber Toe Cap. A rai. cd, protruding rubber toe cap.
(g) Double Stitching and Box-Like Stitch Along the Upper.
(h) Top Linc Collar Throat Shape. The matter shown in broken lines, namely, the license plate heel tab as well as the outline of the shoe along the upper, the tongue, the back edge, the rear panel and the sole are not part of the 1nark.
See Reg. o. 4,065,482.
A true and corr ct replication of the purported trade dress design covered by the
4, 2 Design registration appears below:
2 6. According to Respondent's representations to the USPTO, the '482 Design has allegedly been in use in commerce since 1946.
7. On Au gust 14, 1987, Re. pond en I previously attempted registration of a similar de. ign, Ser. o. 73678529 (see image be lo w), orig in all y described as a ''uniquely shaped toe de -ign'', la ter amended to "a pair of bands havin g a color contrasting the shoe \·Vhich extend aro und the bottom portion of the shoe and a toe portion ha in g a di stinctive design" and fin al1 y settling upon 'two band s, one of which surrounds and the other pa1tia ll y surrounds the lower portion of the shoe."
3 8. That design was initially refused on the basis of descriptivene. s, and subsequent efforts to evidence secondary meaning/acquired distinctiveness in the design were also refused by the Examining Attorney _ finding ''the evidence insufficient to establish that the mark has become distinctive of Appl.icant 's goods". Office Action, Aug. 29 1988 (and citing various third party ·neakers).
9. In support of the finding that the shoe design of Application Serial umber
73678529 lacked distinctiveness, the fil e hi ' tory for the foregoing application shows that in an
Office Action dated August 29, 1988, the Examining Attorney stated:
... copies of advertisements for three different shoes (sneakers) which have a contrasting band extending around the bottom of the shoe and a toe de. ign very similar to Appl.icant's The sneakers with very similar stripe/toe designs are made by, perry, Creek and Cole-Haan. Since the Examining Attorney uncovered these three designs after only a fevv hours of research, there are probably more sneakers with even more similar designs.
10. Respondent's Application No. 73678529 wa ultimately abandon cl .
11. On or about May 11 , 2010, Respondent filed U.S. Application o. 85035857 for the '482 Design, a design which incorporated the same design elements found in the abandoned
73678529 application, and submitted a sworn declaration that "[t]he mark has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use in commerce for al least the five years immediately before the elate of this statement."
12. Upon information and belief: despite Respondent's claim of"substantially exclusive and continuous use" of the '482 Design, a multitude of historic manufactures of athlelic footwear have each used a collection of the design e lement s appearing in the '4( 2
Design, both contemporaneous with and prior to the adoption by Re pondent. Representative examples include, but are by no means limited to, the following:
4 a. ·'G" Oxford/HiCul _ UniRoyal, Athletic Journal, Vol XLVlll #2 p. ( 1967)
1 "G ' OXFORD "G'' HJCUT Men 's White, Men's White, Red -Blue trim Red -Blue trim b. KEDS _Unit e States Rubber Company, Athletic Journal (1936-38) at p. 31
5 c. RANDY _ Randolph Rubber Company, Boot and Shoe Recorder (I 965)
d. Wilso n Ath letic Journal Vol XLV, umber l , p. 4 (1964)
6 c. AFB 100 _ Voit, Athletic Journa l Vol. XLV umber 3, p. 5 (1964)
FB O ｾ＠ •s E ｈｊｾｃ＠ T _.., a__
[ PF Flyers ( 1952)
7 g. Spalding(J957)
h. J. C. Penny (l 966)
8 1. Montgomery \Vard ( 1961)
J. JC Penny _ Children's Basketball Oxford (Spring and Summer Catalog _ 1982)
9 k. Adidas Shooting Star (Bo ys Life, ovember 1970)
L Kanga Roos Rippers (Sports Ulu straled, April 1984)
10 m. Vans (I 989)
n. Keds
11 o. Red Ball Jet ( 1999)
ha I
p. Red Ba ll Jets ( 1950s)
12 q. Jeepers
r. Charterhouse
13 s. Brooks
t. Bata
14 u. Vans (2009)
l3. Upon information and belief the above examples, and other third party shoe d s.igns, at varyin g times over the la st 70 years and/or at the time of the filing of Application o.
ＸｾＰＳＵＸＵＷ＠ for tl1e '482 Design, were contemporaneously present in the marketplace with products of Respondent's footwear comprising the '482 Design.
14. otwithstanding a claim of substantially exclusive and continuous use of the
' 4,. 2 Design dating back to at least as early as 1946, upon information and belief, only recently
has Respond ent actively engaged in efforts 1to enforce trademark rights in the '482 Design
15. Respondent's decades-long lack of enforcement, lack of claim of trademark rights, and coexistence in the marketplace with multiple manufacturers of similar shoe designs is e idence of a lack of acquired distinctiveness associated in the '482 Design.
16. In 2014, via both federal District Court litigation (Converse, In c. v. Highline
Un ited LLC U.S.D.C. E.D.N .Y. , No. 14-cv-5992 (SLT)(VVP) and an ITC Cornp laint (In re
Certain Footwear Products, No. 33 7-TA-936), Respondent ha s a. serted rights in various
15 component clement s included in the '482 Design Registration against Petitioner and many others
in the footwear industry.
I 7. In the ITC Act.ion , Respondent asserted rights in U.S. Registration o. 4,398,753
(the '753 Registration"). The '753 Regi: tration covers a de. ign "consist[ing) of the design of the
two stripes on the mid sole of the shoe, the design of the toe cap, the design of the multi-layered
toe bumper featuring diamonds and line patterns, and tl1 · relative positions of these elements to
each other." An image of the design as recited in the '753 Registration, is reproduced below.
I 8. By comparison, the description of design e lements in the ' 753 Registration
overlaps precisely with design e lements (a), (c), and ('f) of the '482 Design.
19. At the conclusion of the ITC Action, the Commission ruled in favor of Petitioner holding that "the '753 trademark is invalid" due to a lack of secondary meaning or acquired
ddinctiveness. Exhibit "A" (Commission Opinion, ln estigation o. 337-TA-936, June 23 ,
20 16, Public Version at 28).
20. In support of it s in validity finding, the Commission re li ed upon survey evid ence establ.is hing a la ck of secondary mea ning in the design of the ' 753 Registratio n and "substantia l record evidence of use of the [design of the '753 Registration] by multiple third parties from the
1930 's to the present," concluding that this extensive third party use '·weighs heavily against a
16 finding of secondary meaning for th e [d •sign of the '753 Registration].'' Commission Opinion at 20.
2 L. The third party evidence relied upon by the Commi,'sion included, but was not limited to:
a. third party advertisements showing shoes bearin g the design of the '753
Registration;
b. Respond ent parent [ ike) adverti:ements showing shoes bearing the design of the
'753 Registration (appearing on same pages as Res pondent. ho es);
c. expert te timony from individu a Is in the fas hio n/dre, s, footwear and marketing
industries identifying use from the 1930's to the present of shoes bearing the
de. ign of the '753 Registration;
d. Respond ent purchase of the "PF Flyers'' company and sale or PF Flyers shoes
bearing the design of the '753 Registration (before being forced to divest itself of
PF Flyers due to antitrust concerns, and who subsequently , o ld to cw Balance
who continu es to offer shoes bearing the design of the '753 Registration);
e. expert tes timony and catalog evidence of Keel s shoes bearing the design of the
'753 Regi tration throughout the J 990's (including 23 years of promotion ale.',
and advertisement of Keds : neakers between 1988 and 2011 );
f indu, try reference authorities, including the 2000 edition of 'The Complete
Footwear Dictionary' identifie. the 'classic Keels' shoes bear.ing the de, ign of the
'753 Registration (see below) ; and
J 7 g. Rc:ponclent's own 2005 internal document depicting a Con ersc Chu 'k Taylor
All Star shoe bearing the design of the '753 Registration surrounded by 16
competitive J10cs (the "Pretenders Chart") nearly all of which bear the design of
the ' 753 Registration, and with an acknowledgment that -"Imitation is the
sin crest form of wishing we had a design patent!''. Commission Opinion at 25
(see below).
Paul Smith Ｎ ｾＲＰＰ ＠
Vivian Was twood ｔｯｭｭ ｹＸ｡ｨｾ ｭ｡＠ Medium $2001 $93 $a"J Polo ｾ＠ $75
Puma Tretorn $60 $73
PFFlyor $58
Ka.nga Ro o $40 Pony $45 Imitation is the sincerest form of wishing we had a design patent!
18 22. Based on an overwhelmin g vo lume of current and historic evidence, the
Commission found "t11at the average consum er prior to the firs t alleged infringe ment in 2003 was like ly aware of thi s third-party use, which would Lead them lo associate the [de. ign of the '753
R. · gistratio n] with multiple so urce., and therefore subs tantial ly diminishes any secondary meaning in Co nve rse's mark ... [T]he record evid ence here does not just show ra nd om irrelevant third-party u. e, bu t third party use of the sa me mark to pro mote the sa me goods to the sa me consumer class." Co mmiss ion Opin io n at 26 (cita tion omitted).
23. R : pond ent is presently appea ling the ommis.· ion 's decision to the Unit ed States
Court of Appeals for the Federal Circuit. Con verse Inc. v. International Tmde Co mmission,
Case No. 16-2497 (Fed. Cir.).
24. All or mos t of the elements of th e '482 Des ign Registration are functional, either und · r utilit arian fu nctiona lity or aesthetic fo nctionality or both. Moreover, the de ign, as a whole is func tional, eit her und er utilitari an fu nctionality or aesthetic fun ctionality or bo th.
Respond ent, Petitioner, and many others in the fo ot wear industry each have a need and a right to use this functional design.
Moreover, on account of xtensive use acro ss the foot wear indu stry of all or most of the elements of the '482 De. ign Registration, dating fro m the 193 0's to the present the de:ign ha.' become ge neric for the goo ds, a. the design identifies a gerrn: of the goods, and thu s fails to ac t as a so urce indi cator, or trademark for !he goods.
26. Moreover, on acco unt of all or most of the elements of the '482 Design
Reg istration, app ear.ing as common ornamental or decorative malter lacking an acquired dist in cti vene.'s, the co ll ective de. ign element of the '482 Design Registra tion are onuimental, and thu s, fa il to act as a source indicator, or trademark fo r the goo ds.
19 27. Petitioner and Respondent arc both importers and distributor. in the footwear industry. Respondent 's ability to continue lo enforce rights in the '482 Design will continue to harm Petitioner and the industry in general. Accordingly, as Petitioner has a real interest in cancelling the '482 Design registration and believes that it would be damaged by maintaining the registration, Petitioner meet: the standing requirement for a Petition to Cancel.
28. A petition for cancellation for lack of acquired distinctiveness may be filed within five years from the date of registration of the mark, by any person who believes that he is or will be damaged. Accordingly, the present Petition for Cancellation is time ly.
Grounds for Cancellation I Merel. Descriptive/Lack of Acquired Distincti eness
29. Petitioner repea ts and re-alleges each and every a llegation of paragraphs l through 28 as though fully set forth herein
.JO . Respondent 's '482 Design in the form of elements of a . ho e design i a product configuration that is not inherently distinctive.
31 . To be eligible for fe deral trademark protection of the purported trade dre. • in the
'482 Des.ign on the Principal Register, Respondent was required to establish before the US PTO that it product configuration had attained the requisite level of acquired distinctiveness .
.J2 . 15 U.S.C. § I 052(1) ("Section 2(f)'') of the Trademark Act provides that:
. .. not11ing herein shall prevent the registration of a mark used by the applicant which ha s become di. tincti ve of the applicant's goods in commerce. The Director may accept as prima facie evid ence that the mark has become distinctive, as used on or in connection with the app licant's goods in commerce proof of substantia ll y exclusive and continuous use thereof as a mark by the applicant in commerce fo r the five years before the date on which the claim of di. ti.nctiveness is made .. ..
20 33. An acquired distinctivenes. may be established by a showing of substantially exclusive and continuous use of the mark in commerce, and thus, that the primary significance of the product configuration in the minds of the consumer is not the product, but the source of that product.
34. Respondent's '482 Design has not acquired the requisite secondary meaning or di. tinctiveness since a multitude of historic manufactures of footwear have each used a collection of design elements appearing in the '482 Design, both contemporaneous with and prior to the adoption by Re, pondent, and prior to Respondent'. claim of substantially exclusive use.
35. Re:pondent 's use of the '482 Design is insufficient to show secondary meaning, as its use was not substantially exclusive.
ｾＶＮ＠ Respondent's purported trade clres. in the '482 De:ign has not acquired secondary meaning or distinctiveness as provided under Section 2(f), because inter alia consumers do not asso iate Respondent as the so urce of goods bearing the specific design features described in the
'48_ Design Registration.
3 7. As a result, Re. pondent 's '482 Design does not meet the statutory requirements of the Lanham Act for acquired distinctiveness thereby requiring cancellation of Registration No.
4,065,482.
38 . In the alternative, should the USPTO find that certain of the design elements appearing in the Description of the Mark for Registration No. 4,065,482 Jack secondary meaning, the USPTO shou ld order the partial cancel lation of Registration No . 4,065,4t. 2 so as to remove any such non-distinctive elements from the Description of the Mark.
21 Grounds for Ca ncell ation II - Fra ud
39. Petitio ner repeats aJld re-alleges each and e ery all ega tion of paragraphs l
through 38 as though fully set forth herein
40. Pursuant to I 5 U.S.C. I 064(3), Respondent's purported trademark in the '482
Des ign is inva lid because it was procured by fraud.
4 1. Upon information and belief Re spondent was aware of the many third party uses
(some elating back to th · l 930's) containing nearly identica l design configurations, at the time of
filing its application for trademark protection, but failed to disclose , uch material information to
the USPTO.
42. Upon in formation and belief Respondent knowingly made false material
representations of fact in co nn ection with its app li cation on May l I , 20 I 0 when Respondent
, tated in ｩｴｾ＠ declaration in support of the application that "[t]he mark has become distinctive of
the goods/services through th e applicant's su bstantially exclusive and co ntinuous use in
commerce for at least the Ii e year. immediately before the date of thi s sta tement."
43. Res pondent's experi ence in the footwear industry, and representations of ha ving
. old millions of pair. of sho sin it · app lication, provided it with actual knowledge that it was not the "substantially exclusive.'' user of the '482 Des ign. For example, see the 2005 Pretend ers
Chart.
44. Upon information and belief, Re spondent's fa lse material representations were made with an intent to deceive the USPTO into believing th e '482 Design had acquired
econdary meaning.
22 45. Based on Respondent's misrepresentalions, the USPTO was fra udu lently induced into granting Registration of the '482 Design.
46. As a re. ult, Respondent's '482 Design must be cancell ed, as it was procured as a res ul t of a fraud upon the US PTO, thereby requiring canceLlation of Registration No. 4,065,482.
Grounds fo r C ancellation HI -Functionality
47. Petitioner repeats and re-alleges each and every allegation of paragraphs l through 46 as though fully set forth herein.
48. Pur.'uanl to 15 U.S.C. § 1052(c)(5) a trademark may be refused registration on the
Principal Register if it "consi. ts of a mark that ... comprises any matter that as a who le, is functional".
49. The design described in the Regi tralion for the '482 Design, a a whole, is functional pur. uant lo Trademark Act Section 2( e)(5), and should therefore b · cancelled.
50. In the alternative, to the extent the US PTO may find that one or more of the de:ign el ments appearing in the Description of the Mark for Registration o. 4 065,482 i./are functional, the US PTO should issue an Order requiring the partial cancel lation of any such functional e lements from the Description of the Mark for Registration No. 4,065,482.
Grounds for Cancell ation IV - Gcnericism
5 l. Petitioner repeats and re-alleges each and every allegation of paragraphs l through 50 as though fully set fmth herein.
52. The genus of the good. at issue are basketball sneakers.
23 53 . The relevant public und erstands the '482 Design to refer to the : pecific ge1m· of
the goods and not as a so urce identifier or trademark of Respondent.
54. The design described in the Regi. tration for the '482 Design is therefore generic,
and shou Id th erefore be cancelled.
55. In the a lternative, to the extent the USPTO may find that one or more of the
de. ign elements appearing in the Descriptio n of the Mark for Registration No . 4 065,482 is/are
generic and the US PTO should issue an Order rcquir.ing the partial cancellation of any such
generic clements from the Description of the Mark for Registration o. 4,065,482.
Count V - Amendment of Registration Pursuant to Section 18
56. Petitio ner repeats and re-alleges each and every all egation of paragraphs I
through 55 as though fully set forth herein
57. 15 U.S.C. § l 068 ("Section 18") of the Trademark Act provides tha t:
.... the Director ma y ... , otherwis restrict or recti(y ' ith respect to the reg.i.:ter the registration of a reg.istered mark, may refu se to register any or all of severa I interfering mark s, or may regi. ter the ma rk or ma rk.' fo r the per.on or persons entitled th ereto, as the rights of the parties und er this chapter may be established in the proceedings: Provided, That in the case of the registration of an y 1nark based on concurrent use, the Director shall determine and fi x the conditions and li mitations prov ided fo r in subsectio n d) of ection 1052 of thi title ... .
58. Under Section 18, the US PTO ma y order the cancellation of registration No.
4,065 ,482 or the partial cancell ation requiring deletion of any of the purported elements of trade dress comprising the '482 Design as set forth in the Descript ion of the Mark for rea. ons in cluding lack of di stinctiveness, functional.ity and/or generic ism.
r9. Petitioner is currently the Defendant in a federal District Co urt litigation
(Comerse, In c. v. Hig/iline United LLC, U.S.D. C. E.D.N.Y., No. 14-cv-5992 (SLT)(VVP), as 24 well as a Respondent in an ITC Comp laint (In re Certain Footivear Products, No. 337-T A-936), wherein rights in and to the ·753 Design were asserted against Petitioner. The elements of the
'753 Design are id entical lo de:ign clements (a) , (c), and (f) of the '4, 2 Design.
60. As evidenced by the multitude of third party shoes reflecting use of design elements reflecting contemporaneous use of brushed metal grommets, stitching, collar shape and the use of an ankle patch as depicted in the '482 Design, such elements must be removed from the Registration of the '482 Design.
61. As Re:ponclent has asserted and stands to continue to assert one or more elements claimed in Reg istration o. 4,065 482 against Petitioner in the form of a lik eli hood of confusion claim, , uch non-distinctive elements ((a). (c), and (t) of the '482 Design) must be ordered removed from the Description of the Mark for Registration o. 4,065,482.
62. Should the SPTO find that any on · or more of the remaining design clements appearing .in the Description of the Mark for Registration o. 4,065,482 al o lack secondary meaning, the '482 Registration should be can ·e lled in part, restricted or rectified pursua nt lo
Section 18 of the Act ( 15 U.S.C. § 1068) to strike therefrom tho. e elements which the evidence
. ho ws to lack di:tinctiveness and/or not fun tion as a trademark.
Count VI - Mere Ornamentation
63. Petitioner repeats and re-alleges the all egations set forth in paragraphs I through
62 as though fully set forth herein.
64. Each of the elements of the design recited in the '482 Registration is merely a decorative feat ure that does not identify and distinguish Registrant 's goods from those of others, and thus docs not function as a trademark as required by Sections J, 2 and 45 of the Act. The
25 '482 Registration shou ld therefore be cance ll ed on grounds of mere ornamentation pursuant to
Section 14( l)oftheAct(15U.S.C.§1064(1)).
65 . In the alternative, the '482 Regi tration shou ld be cancelled in part, restricted or rectified pursuant to Sections 14 and 18 of the Act (15 U.S.C. §§ I 064 & I 068) to sn-ike therefrom those elements which the evidence shows to be merely ornamenta l or decorative and not functioning as a trademark.
WHEREFORE, Petitioners respectfully request that Board sustain this Petition ru1d order cancellation, or in the alternative the restriction or rectification, of Registration no. 4,065,482.
Petitioners have appointed Leonard . Budow, Michael J. Leonard and Christopher D.
Olszyk, Jr., each of th · law firm of Fox Rothschild LLP to prosecute th is cancellation proceeding and to transact all business in and before the United States Patent and Trademark Office in connection herewith.
Please address all correspondence to:
Leonard N. Budow Fox Rothschi ld LLP 997 Lenox Drive, Bldg. 3 Lawrenceville, cw Jersey 08648-2311 2 12.878 .7902 (direct) 609.896. 1469 (fax) [email protected]
26 The filing fee 'for this Petition to Cancel in the amount of $300.00 is submitted herewith.
Respectfi.i ll y submitted,
HIGHLJ NE UNITED LLC
Date: 5 December 2016 By: /michae l leonard/
Leonard . Budow Michael J. Leonard Chri 'topher D. Olszyk, Jr. Fox Rothschild LLP 997 Lenox Dri ve Bldg. 3 Lawrencevi lle New Jersey 08648-231 l 2 l2.878.7902 (direct) 609.896.1 469 (fax) ipdocket (Zi), foxroth child.com m leonard (C.., fo xrothschild .com
27 CERTIFICATE OF SERVICE
I hereby certify that a true copy of the foregoing Petition for Cancellation was served on
Re. pondent on this 5th clay of December 2016 by. ending sa me via First Class Mail, postage prepaid to :
B. Anna kCoy, Esquire Alleman Hall McCoy Russell & Tuttle LLP 806 SW Broadway Suite 600 Portland, OR 97205
/micha 1 leonard/
28 EXHIBIT A PUBLIC VERSION
UNITED STA TES INTERNATIONAL TRAD ｉ ｾ＠ COMMISSION ｗｾｴｳｨｩｮｧｴｯｮＬ＠ D.C.
In the Matter of Investigation No. 33 7-T A-936 CERTAIN FOOTWEAR PROD CTS --- -·-- ...-·-· ---·--·------.. -
COMMISSION OPINION
l PUBLIC VERSION
TABLE OF CONTENTS
I. INTI{.OD.UCTION ...... 3 IT. BAC.KGROUND ...... 3 A. Trademarks Asserted ...... 6 B. The Commission's Determination of No Violation with Respect to the '753 Trademark10 III. DISCUSSION A D FIN.DINGS ...... 11 A. The ALJ's Fincling of No Invalidity of the '753 Trademark Wi th Respect to Secondary Meaning ...... :...... 12 1. Relevant Laiv ...... '...... 12 2. The JD ...... 15 3. Analysis ...... 16 B. The ALJ 's Findings oflnfringement ...... 28 TV . CO CLUSlON ON VIOLATION ...... 28 V. REMEDY, PUBLIC INTEREST, A D BONDING ...... 29 A . R.en1edy ...... 29 1. Circumvention OfAn LEO...... 31 2. Pattern Of Vio lation Of Section 33 7 Where It Is Difficult To Identify Source Of Jrifi·inging Products ...... 32 B. Public interest...... 33 C. Bonding ...... 34 VI. CONCLUSION ...... 35
2 PUBLIC VERSION
I. INTRODUCTION
On November 17, 2015, the presiding administrati ve law judge ("ALJ") issued his final initial determination ("J D") finding a violation of section 337 as to certain accused products of each active respondent and as to all accused products of each defaulting respondent. On February
3, 2016, the Commission determined to review the final ID in part. 81 Fed. Reg. 6886-89 (Feb. 9,
2016). The Commission now terminates the investigation and issues a general exclusion order with respect to U.S. Trademark Registration Nos. 3,258, 103 ("the ' 103 trademark") and 1,588,960
("the '960 trademark").
II. BACKGROUND
The Commission instituted this investigation on November 17, 2014, based on a complaint filed on behalf of Converse Inc. ("Converse") of North Andover, Massachusetts. 79 Fed. Reg.
68482-83. The complaint alleged violations of section 337 of the Tariff Act of 1930, as amended,
19 U.S.C. § 1337, by reason of infringement of certain registered trademarks: U.S. Trademmk
Registration No. 4,398,753 ("the '753 trademark') and the '103 and '960 trademarks. The complaint further alleged violations of section 337 based upon unfair competition/false designation of origin, common law trademark infringement and unfair competition, and trademark dilution, the threat or effect of which is to destroy or substantially injure an industry in the United
States. _The Commission 's notice of investigation named numerous respondents including
Wal-Mmt tores, Jnc. ("Walmart") of Bentonville, Arkansas; Skechers U.S.A., Inc. ("Skechers")
ｯｾｬ｜ｴｬ｡ｮｨ｡ｴｴ｡ｮ＠ ｂ･ｾ｣ｨＬ＠ California; and Hi_ghline United LLC ､Ｏ｢ Ｏｾ＠ As_h Fo?twear USA ("High_line")
3 PUBLIC VERSION
of New York City, New York. The Office of Unfair Impo1t Investigations ('OUll") was also
named as a patty to the investigation. Id.
New Balance Athletic Shoe, Inc. ("New Balance") of Boston, Massachusetts was
subsequently added as a respondent-intervenor. See Order No. 36 (unreviewed, Comm'n Notice
Feb. 19, 2015). Two models of New Balances accused footwear i.e., the CPI Hi and CPI Lo
sneakers, were terminated from the investigation. See Order No. 83 (April 9, 2015; unreviewed,
Comm'n Notice May 6, 2015). Only Walmait, Skechers, Highline, and New Balance remain
active in the investigation. The following five respondents were found in default: Shenzhen
Foreversun Industrial Co., Ltd. (a/k/a Shenzhen Foreversun Shoes Co., Ltd.) ("Foreversun") of
Shenzhen, China; Dionjso SRL of Perugia, Italy; Fuj ian Xinya l&E Trading Co. Ltd. of Jinjiang,
China; and Zhejiang Ouhai International Trade Co. Ltd. and Wenzhou Cereals Oils & Foodstuffs
Foreign Trade Co. Ltd., both of Wenzhou, China. See Order Nos. 58, 106 (Feb. 24 and May 8,
2015); Comm n Notices (Mar. 12 and June 2, 2015). All other respondents.have been terminated
. from the investigation based on settlement, consent order, or good cause. Complete details of the
procedural hi.story can be found in the final ID. See ID at 1-4.
The ALJ issued his final ID on November 17, 2015, finding a violation of section 33 7.
Specifically, the ALJ found that the '753 trademark is not invalid or diluted and that certain
accused products of each active respondent, and all accused products of each defaulting
respondent, infringe the ' 753 trademark. See ID at 130-32. He also found that certain accused
products of defaulting respondent Foreversun infringe bo.th the' 103 and '960 registered
4 PUBLIC VERSION trademarks and that Converse ｳｾｩｴｩｳｦｩ･､＠ both the economic and technical prongs of the domestic industry requirement with respect to all asserted registered trademarks. Id. The ALJ issued his recommended determination (RD) on remedy and bonding during the period of Presidenti.al review on the same date. His recommended remedy included a general exclusion order directed
to footwear products that infringe the asserted registered trademarks and cease and desist orders directed against each active, remaining respondent found to infringe the '753 trademark. See RD at 133-4 2.
On December 4, 2015, complainant, respondents, and the Commission investigative attorney ("IA") each filed a petition for review of the final ID. On December 14, 2015, each of these parties filed responses to the other petitions for review.
On February 3, 2016, the Commiss.ion determined to review the final ID and to request submissions from the parties on the issues under review. 81 Fed. Reg. 6886-89. The
Commission also requested written submissions on the issues of remedy, the public interest, and bonding from the parties, interested government agencies, and other interested non-parties. Id.
On February 17 and 24, 2016, respectively, Converse, respondents, and the IA each filed a brief
1 and a reply brief on all issues for which the Commission requested written submissions. ·
1 See Complainant Converse Inc. 's Written Submission to the Commission Regarding the Issues Under Review; Complainant's Submission on Remedy, Bonding, & Public Interest ("Converse's Remedy Resp."); Complainant Converse Inc.'s Reply Submission to the Commi.ssion Regarding the Issues Under Review; Complainant's Reply to Respondents' Response to the Commission Determination to Review the Final Initial Determination In Part and ·written Submission on Remedy Public Interest, and Bond; Respondents' Response to Request for Written Submissions Regarding Issues Under Review; Respondents' Response to the Commission Determination to
5 PUBLIC VERSION
Respondents' reply brief included a request for a Commission hearing to present oral argument under Commission rule 210.45(a). On February 29 and March 3, 2016, respectively, both
Converse and the IA filed responses to respondents' request, along with a motion for leave to :file a sur-reply to the request for oral argument. On March I, 2016, respondents filed a motion for leave to submit a sur-reply to their request for oral argument.2 The Commission grants all motions for leave to file sur-replies, and denies respondents' request for a Commission hearing to present oral argument.
A. Trademark'\ Asserted
Generally, the "anatomy" of a shoe is di vided into three parts: (1) the "·upper" portion, which is the material portion that more or Jess sunounds and covers the top of the foot; (2) the
"midsole' portion between the upper and the bottom portion of the shoe that can provide cushioning and/or support structure to the shoe; and (3) the "outsole' portion which refers to the tread or bottom portion of the shoe ordinarily in contact with the ground. See ID at 10 (citing
Review the Final Initial Determination In Part and Written Submission on Remedy, Public Interest, and Bonding; Respondents' Response to Written Submissions by Converse and OUJI Regarding Tssues Under Review; Respondents' Reply Written Submission on the Issues of Remedy, Public Interest, and Bonding; Response of the Office of Unfair Import Investigations to the Commission's Request fo r Written Submissions Regarding the Jssues Under Review and Remedy, Bonding, and the Public Interest ("IA s Resp."); Reply Submission of the Office of Unfair Import Investigations to the Private Parties' Written Submissions Regarding the Issues Under Review and Remedy, Bonding, and the Public Interest.
2 See Complainant Converse lnc.'s Sur-Reply to Respondents' Request for Oral Argument; Response of the Office of Unfair Import Investigations to Respondents' Request for Oral Argument; Respondents' Response to Converse Inc. 's Motion for Leave to Submit a Sur-Reply to Respondents' Request for Oral Argument.
6 PUBLIC VERSION
CX-1 at ii 8 n.l).
The '753 Federally-Registered Trademark (Converse Midsolc Trademark)3
On August 6, 2012, Converse filed an application to register its midsole design with the
U.S. Patent & Trademark Office ("PTO"). Id. (citing CX-226.0015). The PTO issued the '753 (
trademark for the midsole design on September 10, 2013. Converse asserts that its
federally-registered rights, as well as its common law trademark rights, cover "the combination of
the toe cap, multi-textured toe bumper, and two midsole stripes that Converse commonly uses in
connection with its Chuck Taylor All Star (CTAS) high-top shoes, i.e., [the Converse Midsole
Trademark - ] the 'CMT' ." Id. (citing Converse's Post-Hearing Br. at 6). The CMT as depicted
in the ·753 trademark, Converse' s depiction of the CMT from its complaint (see complaint at i
10), and representative CTAS shoes bearing the CMT are depicted below in Figure 1. The asserted federally-registered and common law trademarks are co-extensive, i.e., one and the same.
The CT AS high-top shoes bearing some fonn of the CMT, have been marketed and sold by
Converse for basketbaU/athletic use since th e 1930s, and a lov-l-top version of these CTAS shoes was introduced in the 1950s. See Complaint ｡ｴｾｩＡ＠ 11-12, 18; CX-242C at QQ. 49-59; CX-243C at
QQ. 51-102; CX-237C at QQ. 112-34.
3 The terms '"753 trademark," 'Converse Midsole Trademark," "midsole trademark," "CMT," and "midsole-design" are used synonymously herein. ·
7 PUBLIC VERSION
Figure 1 .
8 PUBLIC VERSION
The '103 and '960 Federally-Registered Trademarks (Converse Outsole Trademark)
Converse alsq asserts its federally-registered and common law trademark rights with respect to its outsole design. Converse asserts that these rights cover "a distinct diamond pattern
outsole" used in connection with the CTAS shoes. The asserted federally-registered and common
law trademarks are co-extensive. Converse holds two foderally-registered trademarks related to
the Converse Outsole Trademark, i.e., the "COT" - the' 103 and Ｇ Ｎ ＹｾＰ＠ registrations. These
registrations, along with representative CTAS shoes bearing the COT, are depicted below in
Figure 2. The PTO issued the ' 103 and '960 trademarks for the outsole design on March 27, 1990.
and July 3, 2007, respectively. Therefore, both trademarks have become incontestable. JD at 12;
see 15 U.S.C. § 1065 (a registered mark becomes incontestable afte.r 5 consecutive years of
continuous use).
Figure 2
'103 Registration ·
,'
9 PUBLIC VERS10N
'960 Registration
B. The Commission's Determination of No Violation with Respect to the '753 Trademark
On February 3, 2016, the Commission determined to review: (1 ) the ID ' s finding that the
'753 trademark is not invalid; (2) the ID's findings regarding infri ngement of the ' 753 trademark;
(3) the ID's finding that the common law trademark asserted in the design depicted in the '753
trademark is invalid; and ( 4) the ID' s finding that there is no violation of section 33 7 with respect lo
the common law trademarks asse11ed in the designs depicted in the' l 03 and ' 960 trademarks. The
Commission requested written submissions from the parties on a number of issues. The
Commission did not review the remainder of the final ID. See 81 Fed. Reg. 6886-89 (Feb. 9,
2016). On re,iiew, the Comfnission reverses the ID 's contrary findi ng and determines that the '753
10 PUBLIC VERSION
trademark is invalid based on lack of secondary meaning, and affirms the ID's finding that the
common law trademark depicted in the ' 753 trademark is invalid. The Commission has also
affinned the ID's finding that there is a likelihood of confusion with respect to the '753 trademark
for specific accused footwear products if this trademark is not invalid, and has affirmed the ID's
finding that there is no likelihood of confusion with respect to the '753 trademark for other specific
accused footwear regardless of invaliditi Accordingly, the Commission has determined there is
no violation of section 33 7 with respect to the '753 trademark.
The Commission has further determined to vacate the ID' s finding of no violation of section
33 7 with respect to the common law trademarks asserted in the designs depicted in the '103 and
960 trademarks. The ID's finding of no violation with respect to these common law rights is moot in view of the ID 's finding (unreviewed) ofa violation with respect to the federally-registered rights
in the ' I 03 and '960 trademarks and the fact that the scope of the common law and federally-registered rights in these trademarks is co-extensive.
III. DISCUSSION AND Fll"DINGS
For the reasons set forth below, the Commission has determined to affinn-in-part,
reverse-in-part, and vacate certain po1tions of the I D's findings that were under review. We adopt.
the I.O 's findings on the issues that are not inconsistent with this opinion.4 The Commission finds
4 The determinations made in the ALJ's final ID that were not reviewed became final determinations of the Commission by operation of rule. ｾ･･＠ 19 C.F.R. § 210.42(h)(2). The ID's findings that the Commission adopts which are not inconsistent with this opinion include, but are · not liIY1ited to, the ID's finding that the '753 tradcmarbs not invalid due to functionality or genericness. See TD at 57-64.
11 PUBLIC VERSION no violation with respect to the '753 trademark and restates that there is a violation with respect to.
tbe federally-registered rights associated with the 'l 03 and '960 trademarks by defaulting respondent Foreversun due to this ｾｲ･ｶｩｯｵｳｊｹ＠ unreviewed finding in the final ID. See 81 Fed.
Reg 6886-89 (Feb. 9, 2016). This opinion provides, inter alia, the Commission's analysis and reasoning for both its detem1ination of no violation with respect ｾｯ＠ the '753 trademark and its determination on remedy, the public interest, and bonding for violation with respect to the '103 and ' 960 trademarks.
A. The AL.J's Finding of No Invalidity of the '753 Trademark With Respect to Secondary Meaning
J. Relevant Law
This case involves the assertion of a registered trademark on a specific trade dress, i.e., the midsoJe design of the Converse shoe. The Lanham Act (U.S. Code, Title 15, Chapter 22,
Trademarks) extends protect.ion not only to traditional trademarks, e.g., words and symbols, but also to "trade dress," defined as "the design and appearance of a product together with the elements making up the overal l image that serves to identify the product presented to the consumer." See
Yankee Candle Co., Inc. v. Bridgewater Candle Co .. LLC, 259 F.3d 25, 37-38 (ls1 Cir. 2001)
(citing Chrysler Corp. v. Silva, 118 F.3d 56, 58 (1'1 Cir. 1997) (quotingFwi- Damental Too, Ltd. v.
Gemmy Indus. Corp., 111 F.3d 993, 999 (2d Cir. 1997))). The primary purpose of trade dress protection is to protect that which identifies a product's source. J:P. Lund Trading ApS v. Kohler
Co., 163 F.3d 27, 35 (1st Cir. I 998). Courts recognize trade dress claims based both on product packaging and on "product design/configuration.'' See, e.g, Wal-iv.fart Stores -v. Samara Bros.,
12 PUBLIC VERSION
Inc., 529 U.S. 205, 213- l 4 (2000). While "trade dress" historically referred to product packaging
and labeling, modem definitions encompass the shape and design of a product itself, i.e., product
design or configuration. See Elm er v. ICC Fabricating, Inc., 67 F.3d 1571, 1578 (Fed. Cir. 1995)
(citing .John fl Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 980, 219 USPQ 515, 528(J1th
Cir. 1983)).
In order for a trademark to be valid, it must be non-functional and distincti ve (i.e., has
acquired "secondary meaning"). To establi sh a cause of action for trade dress infringement
involving product configuration, which is the case here, the relevant trade dress must have
acquired distinctiveness or secondary meaning. See 15 U.S.C. § 1052(£) (Sect. 2) ("except as expressly excluded ... nothing herein shall prevent th e registration of a mark used by the applicant which has become distinctive of the applicant's goods in commerce."); Wal-Mart Stores, 529 U.S.
205 at 216 ("in an action for infringement of unregistered trade dress . . . a product's design is distinctive, and therefore protect[a]ble, only upon a showing of secondary meaning."); see also Tie
Tech, Inc. v. Kinedyne Cmp. 296 F.3d 778, 783 (9th Cir. 2002) ("[T]here can be no infringement of an invalid mark.").
Secondary meaning oc.curs when "in the minds of the public, the pr.imary significance of a
[mark or trade dress] is to identify the source of the product rather than the product itself." See
Certain Ink Markers & Packaging Thereof("Ink Markers"), Inv. No. 33 7-TA-522, Order No. 30 at
26-27 (July 25, 2005) (unreviewed) (quoting Wal-Mart Stores, 529 U.S. at 216). Secondary meaning also req uires a showing that there is a "mental recognition in buyers' and potential
13 PUBLIC VERSION.
buyers' minds that products connected with the mark are associated with the same
source.'' Adidas-Salomon AG v. Target Corp., 228 F.Supp.2d 1192, l 195 (D. Oregon 2002)
1 (quoting Japan Telecom, Inc. v. Japan Telecom America, Inc., 287 F.3d 866, 873 (9 h Cir. 2002)).
Whether or not a trademark has acquired secondary meaning is a question of fact. See G.H
Mumm & Cie v. De.woes and Geddes, Ltd., 917 F.2d 1292, 1294 (Fed. Cir. 1990).
Relevant Law Regarding Secondary Meaning Factors
The Commission considers evidence pertaining to seven factors to assess whether a mark
or trade dress has acquired secondary meaning. One factor, consumer surveys, provides direct evidence of secondary meaning; the remaining six factors provide circumstantial evidence.
These factors are: (1) the degree and manner of use; (2) the exclusivity of use; (3) the length of use; ( 4) the degree and manner of sales, advertisi.ng, and promotional activities; (5) the effectiveness of the effort to create secondary meaning; (6) deliberate copying; and (7) association of the trade dress with a particular source by actual purchasers (typically measured by consumer surveys). See Certain Digital Multimeters, and Products with Multimeter Functionality ("Digital
Multimeters"), Inv. No. 337-TA-588, Order No. 22 at 8 (Feb. 4, 2008) (unreviewed); see also
Thompson Medical Co., Inc. v. Pfizer Inc., 753 F.2d 208, 217 (2d Cir. 1985). These factors are not weighed equally, but rather "the strongest and most relevant evidence regarding whether a mark has acquired secondary meaning ... is evidence by a public opinion survey or poll [i.e., · factor (7)]." Ink Markers, Order No. 30 at 27; see also Yankee Candle, 259 F.3d at 43; Echo
1 Travel, inc. v. Travel Associates, Inc., 870 F.2d 1264, 1269 (7 h Cir. 1989).
14 PUBLIC VERSION
2. The ID
The TD found that the '753 registered trademark's (the CMT's) presumption of validity was the deciding factor to conclude that the m.idsole design possessed secondary meaning where four of the seven factors were in favor of secondary meaning even though the strongest factor,
survey evidence, weighed against finding secondary meaning. ID at 56. Both respondents and the IA contend that the presumption is inapplicable here because Converse is asserting infringement against products that were in use prior to the CMT's registrnlion. IA 's Pet. at 10;
1 Respondents' Pet at 6-7 (citingAromafique, Inc. v. Gold Seal, Inc., 28 F.3d 836, 870 (8 h Cir.
1994) (holding that the trademark owner was not entitled to the presumption that its registered trade dress had acquired secondary meaning.because the owner alleged that infringement had begun tluee years prior to registration)). Based on Aromatique, respondents and the IA both asserted that the burden of proving secondary meaning by a preponderance of the evidence shifted to Converse, which failed to caITy this burden.
The ID noted that Converse asse1ted both the common law and federally-registered rights in the GMT, which are co-extensive in scope. TD at 10, 14 . The ID found that the only difference in the secondary meaning analysis, as applied to both rights, was the presumption of validity V·/hich applied to the registered midsole design only. Id. at 14 (citing Wal-Mart, 529 l .S. at 216). With the presumption of validity in mind, the TD then considered all seven factors regarding whether the CMT possessed secondary meaning. Id. at 14-56.
15 PUBLIC VERSION
The ID found that four factors weigh in favor of secondary meaning: factor (1) (degree and manner of use), factor (3) (length of use), factor ( 4) (degree and manner of sales, advertising, and promotional activities), and factor (6) (deliberate copying); one factor weighs against, factor
(7) (survey evidence); and two factors are neutral, factor (2) (exclusivity of use) and factor (5)
(effectiveness of efforts to create secondary meaning). Because the evidence concerning factor 7
(survey evidence) that weighs against secondary meaning provides the "strongest and most relevant" evidence, the ID found that the outcome here is a close call. Id. at 56. The ID ultimately detennined that because the presuri1ption of validity applies with respect to the registered '753 trademark, respondents and the IA did not meet their burden in overcoming this presumption by a preponderance of the evidence. The ID found .therefore that the registered Cl\1ff possesses secondary meaning. Td.
However, with respect to the asserted common Jaw rights associated with the design depicted in the '753 trademark, the ID detennined that there was no secondary meaning possessed by the common law mark because there is no presumption of validity for such an unregistered mark and Converse did not meet its burden to overcome the lack of sufficient survey evidence.
Id at 56-57 (citing ｆ ｬｹｮｮｾ Ｎ＠ Peters, 377 F.3d 13, 19 (1st Cir. 2004)); see also Wal-Mart, 529 U.S. at
216.
3. Analysis
The Commission has determined that the '753 trademark is invalid as not distinctive based
.on the totality of the record evidence on secondary m.eaning. The Commission finds thatthe
16 PUBLIC VERSION
registration of the '753 trademark provides prima facie evidence of the validity of the '753 mark
under Section 33(a) of the Lanham Act regardless of when infringement first began. 'Dle
Commission affim1s the ID's analysis as to factors 1 and 3-7. However the Commission finds
that the ID erred in concluding that factor 2 (exclusivity of use) is neutral in view of at least the
substantial record evidence of longstanding, concurrent use of the CMT design by third parties.
Based on the record evidence as a whole, the Commission reverses the ID's ultimate finding that
the federally-registered '753 trademark had acquired secondary meaning, which is inconsistent
with the lD's correct finding that the common law rights asserted in this mark had not acquired
secondary meaning.
Parties' Respective Burdens Regarding Secondary Meaning .
The Commission agrees with the ID that pursuant to Section 33(a) of the Lanham Act, the
registration of the CMT design provides primafacie evidence of the validity ofregistered '753
mark, including secondary meaning, regardless of when infringement first began. Under the
Lanham Act, federal registration is ''prima facie evidence of the validity of the registered
trademark .... " 15 U.S.C. § 1115(a) (Sect. 33(a)). See also Certain Handbags, Luggage,
Accessories, & Packaging Thereof, Inv. o. 337-TA-754, Order No. 16 at 6 (March 5, 2012)
(unreviewed). This statutory "prima.facie evidence" of validity has three facets, namely that the
registered trademark: (1) possesses secondary meaning; (2) is not functional; and (3) is not
generic. See Jn re Cordua Restaurants, Inc., --- F.3d---, 2016 WL 2786364 at *3(May13, 2016)
. (citing B &B Hardware, Inc. v. Hargis Industries, Inc., 135 S.Ct. 1293, 1300 (2015)).
17 PUBLIC VERSION
The parties dispute whether the "primafacie evidence" language of Section 33(a) of the
Lanham Act shifts the burden of production and/or the burden of persuasion to the respondents. 5
The Commission recognizes that the law remains unsettled as to the burden-shifting effect of the
"primafacie evidence" language of Section 33(a).6 The Commission need not resolve this legal
issue because regardless of whether the "prima facie evidence" language shifts to the challenger
the burden of persuasion or the burden of production, the record as a whole here warrants a finding
that the asserted '753 trademark has not acquired secondary meaning. 7
5 See JA's Petition for Review at 5-13 ; Respondents' Petition for Reviev.1 at 4-12; Converse's Response to Petitions for Review at 16-18; IA 's Response to the Commission's Request for Written Submissions Regarding the Issues Under Review at 7-13 ; Respondents' Response to the Commission's Request for Written Submissions Regarding the Issues Under Review at 1-22; Converse's Response to the Commission's Request for Written Submissions Regarding the [ssues Under Review at 13-18.
6 See, e.g., 6 McCarthy on Trademarks and Unfair Competition§ 32: 138 (4th ed.) (noting that the federal circuit courts are divided as to the burden-shifting etlect of the ''primafacie evidence" language of Section 33(a) of the Lanham Act). Compare Apple Inc. v. Samsung Elecs. Co. Ltd., 7 86 F.3d 983, 995 (Fed. Cir. 2015) (noting that the prima facie evidence effect is to " shift the burden of production to the defendant."); Amazing Spaces, Inc. v. Metro Mini Storage, 608 F.3d 225, 239 (5th Cir. 2010) ("The presumption of validity :flowing from trademark registration .. . has a burden-shifting effect, requiring the party challenging a registered mark to produce sufficient evidence to establish that the mark is [non-distinctjve] by a preponderance of evidence.") (citing Retail Servs. Inc. v. Freebies Publ 'g, 364 F.3d 535, 542 (4 'h Cir. 2004)) with Aluminum Fabricating Co. ofI'ittsburgv. Season-All Window Corp., 259 F.2d 314, 316 (2d Cir. 1958) ("there is a strong presumption of validity so that the party claiming invalidity has the burden of proof and in order to prevail it must put something more into the scales than the registrant.").
7 Conversely, this prima.facie effect derived from registration does not apply to asserted common law rights, e.g., unregistered trademarks, and the1:efore the owner at common law bears the burden of establishing that its common la\.v marks have secondary meaning and are not functional. . See Wal-Mart Stores, 529 U.S. at 216; 15 U.S.C. § I 125(a)(3) (Sect. 43).
18 PUBLlC VERSION
Secondary Meaning and Validity of the CMT Design
As stated supra, the ID correctly found, in consideration of the evidentiat)' record, that the asserted common la\V trademark in the design depicted in the federally-registered 753 trademark
is invalid based on lack of secondary meaning. See ID at 56-57. The Commission also finds that the ID, consistent with this invalidity finding regarding the common law trademark, also should have found, .in consideration of the totality of the evidentiary record, that the federally-registered
'753 trademark is invalid based on lack of secondary meaning. See, e.g., Mine Safety Appliances
Co. v. Electric Storage Battery Co., 405 F.2d 901, 904 (C.C.P.A. 1969) ("Jt is our understanding of the Lanham Act that it is for the registration, not the creation, of trademarks. Its terminology• indeed, the history of federal traden1ark statutes - presupposes the preexistence of a trademark to be registered."); La Societe Anonyme des Pmfums le Galion v. Jean Patou, Inc., 495 F.2d 1265,
1270 n.5 (2d Cir. 1974) ("The Lanham Act does not create the trademark right; it only recognizes the right acquired through use.").
Specifically, the ID correctly found that factor 7 (survey evidence), which provides the
"strongest and most relevant" evidence, weighs against a finding of secondary meaning. See ID at 16-36; Ink Markers, Order No. 30 at 27; see also Yankee Candle, 259 F.3d at 43 (" [survey evidence] is a valuable method of showing secondary meaning."); Echo Travel, 870 F.2d at 1269
(the court teaching that a likelihood of success in establishing secondary meaning can be shown solely based on strong consumer survey evidence, newspaper adve1tising, and distribution of
19 PUBLIC VERSION
40,000 advertising posters in initial 10-month period of poster advertisement) (citing Paramounr
Pictures Corp. v. Worldwide Entertainment Cotp., .1977 WL 25613 (S.D.N.Y.1977)).
As to secondary meaning factor 2 (exclusivity of use), hovvever, the ID erred in concluding
that the evidence of third-party use and its effect on secondary meaning was neutral to Converse.
See ID al 37-46. The Commission finds that the totality of the evidence as to this factor
contradicts Converse's assertion that its use of the CMT design has been substantially exclusive.
Rather, the evidence shows multiple third parties simultaneously used the CMT design nationaJly
on the same types of footwear products promoted to the same consumer class. Accordingly, the
Commission finds that factor 2 is negative to Converse (i.e. , weighs against a finding of secondary meanin g) and, in combination with al least the All's correct finding that factor 7 (survey evidence) was negative to Converse, weighs heavily against a finding of secondary meaning for the CMT.
We find that substantial record e\ddence of use of the CMT by multiple third parties from
the 1920s to the present provides strong circumstantial proof that at least a significant percentage of the average consumers of CTAS shoes associated the mid sole design with multiple sources other than (or in addition to) Converse . .
The record evidence includes numerous examples of sig11ificant third-party use including, but not limited to, the following:
(a) Respondents' experts in a plurality ofrclated fields (fashion/dress, shoes, and marketing),
Dr. Golder, Mr. Maeder, Dr. Hanssens, and Mr. Walford, provided abundant testimonial
20 PUBLIC VERSION
and record evidence of third-party use of the CMT from the 1930s to the present by a
number of brands (e.g., Skips, Pro Skips, Toughs kins, Jeepers, Gamebustcrs, LA Gear, PF
Flyers, Keds, Fortune Dynamics (in Fortune Dynamic Catalog), Calvin K lein, Guess,
KangaRoos Rippers, McKicls, etc.) including, but not limited to, as shown by yearly
advertisements in three major catalog retailers (Sears, J.C. Penney, and Montgomery
Ward) with circulation in the hundreds of millions and catalog and retail sales in the
billions of dollars. See RX-3C (Golder WS) at QQ. 38, 51 , 64, 74-94, 102-114;
RX-202.002; RX-29.001; RX-2087C (Walford WS) at QQ. 16, 18, 23, 31-60, 80-1 15;
RX-7698C (Maeder WS) at QQ. 19-27, 49-89;; RX-2091C (Hanssens WS) at QQ. 29-46,
48-77, 8 J; RX-2208; RX-2479C.004, .008-.010; RX-0539; RX-2205; RX-2209; RX-2212;
RX-2416-18 ; RX-9240.025, .030 .042; RX-9996C- l 0001 C; RX-2170; JX-426C.0037 at
124-25; JX-4 13C at 145-46, 166-67; RX-2307.003; RX-2474.016; RX-10042.011 ;
RX-9827; RX-22 '17; RX-2390; RX-7881; RX-7883; RX-2213 at SKECH-ITC00026349;
RX-l 0099; RX-2184; R,'{-2404; RX-2236; RX-23; RX-2212; RX-2195; RX-2324.001.;
RX-2409;. RX-2393;. RX-2416; RX-2221; RX-2235; RX-2209; RX-2168; RX-21 70;
RX-2339; RX-2526; RX-2340-41; RX-2273; RX-2277-78;RX-2299; RX-2314;
RX-2331.
(b) Separate advertisements showing Keds, Spalding, and PF Flyers shoes (shown in the Sept.
1958 and May and June J 959 Coach & Athlete, respectively) as well as La Crosse and Bata
shoes all bearing the CMT. See RX-2302; RX-8202; ｒｘｾＸＵＴＵＮＰＰＳＬ＠ .005, .0 13.
21 PUBLIC VERSION
( c) In the 1988 Fall/Winter J.C. Penney catalog, which had a circulation of over 12 million
copies and annual sales over 4 billion dollars, Converse's shoes were marketed
immediately above an advertisement for Airwalk-branded sneakers bearing the CMT; and
in that same year s Spring/Summer catalog, which also had similar circulation figures, J.C.
Penney advertised CTAS shoes on the very same page as Nike-branded canvas sneakers
bearing the CMT. See RX-2305.005; Tr. at 975-79; RX-2307.003; RX-2091C at Q.
64-69; RX-8815.
( d) PF F lyers shoes, bearing a combination of a toe cap, toe bumper, and midsole stripe, have
been sold and advertised since at least the 1940s to the present; Converse itself owned this
brand and sold and advertised the,?e shoes in the 1970s until it was forced to divest PF
Flyers due to antitrust concerns. PF Flyers re-entered the market in the early 1990s after
being acquired by Leif J. Ostberg Inc. ("LJO"). See RX-7698C at Q. 66; RX- IC at QQ.
19-22, 25, 29, 42- 163 ; RX-52-59; RX-61; RX-474; JX-81; RX-829C at 115-19, 124-25;
RX-476-82; R.X-523-27; RX-538-42; RX-655; RX-1352; RX-2301; RX-2785;
RX-2890-91 ; RX-2893-95; RX-7862; RX-8292-94; RX-9910; RX-10036. Also,
specifically, LIO represented to New Balance when it sold them the brand in 2001 that no
other party has property interests in the PF Flyers and that property interests previously
held by any other party have been effectively transfened to LJO (RX-495).
(e) Expert testimony and catalog evidence of Keds sneakers bearing the CMT throughout the
1990s (RX-209. 1 at Q. 81 ; RX-2479C (Fall 1993 Keds'cataJog); RX-9240 (Fall .1995
22 PUBLIC VERSION
Keds' catalog)). The JD discounted this evidence since it did not directly indicate sales
(see ID at 45); however, there was at least circumstantial evidence of substantial
promotion, advertisement, and sales of Keds sneakers bearing the CMT from this time
period based on the alongside advertisement in the l 988 J.C. Penney Fall/Winter catalog
(RX-2305) and the 2011 agreement between Converse and Collective Brands, Inc. ("CB" -
owner of Keds) wimanting that CB "exclusively advertised, promoted, distributed, and
sold shoes bearing the" CMT. See JX-72C at 2 Ｈｾ＠ I.A.2) Accordingly the evidentiary
record indicates al least 23 years of promotion, sales, and advertisement of Keds sneakers
between 1988 and 2011; starting 24 years prior to Con verse's application for PTO
registration of the CMT in 2012.
(:f) The 2011 agreement between Converse and CB resulted from [[
]]. See ID at 45-46; JX-72C at 2. The agreeme11t also
included a provision that [[
]]. SeeJX-72Cat
4-S(ifII.B.1),6-8( II.D). [[
]]. Jd at ＴＭＵＨ ｾ ＱＱＮｂＮｬＩＮ＠
Also, this Historic Kicks Designs bearing the CMT (JX-72 at Exhibit B) included the
Airwalk line of shoes shown in the alongside advertising in the 1988 J.C. Penney
23 PUBLIC VERSION
Fall/Winter catalog (RX-2305).
(g) In 200 I, Skechers introduced a slip-on retro-basketball sneaker bearing the CMT
(RX-6601; RX-2092C at QQ. 50-56). The record evidence contains associated
circulation and sales numbers for these shoes and advertisements (RX-2896C). Mr. Clark,
Skechers' Vice President of Sourcing, testified that 36 different companies have made
shoes bearing some form of the midsole design going "back to the 1890s." See CX-1555C
(Clark Dep. Tr.) at 235 -240; CX-80 I.
(h) A 2005 internal Converse document/chart (see Figure 3 below') depicts a CTAS shoe
surrounded by 16 competitive shoes, nearly all of which bear a combination of a toe cap,
toe bumper, anc.l rnidsole stripes including at least some of which bear the CMT. The
subtitle reads: "The competition is aggressive and on the attack at all price points," and
the bottom of the document says "Imitation is the sincerest fonn of wishing we had a
design patent!" The chart describes Converse as "the leader in a fragmented
marketplace," and indicates that it has just 11. 7% market share, followed by Skecbers
(9.1 %), Tommy Hilfiger (8.4%), Nike (7.3%), and Keds (7%). See CX-4032.0034, .0064;
RX-7698C at Q. 7L
24 PUBLIC VERSION
Figure 3 Ｐ THE PRETENDERS Ｚｧｾｾ Ｇ ｍ｣ｩ Ｇ ･ｾ ＺｾＺｲｒ･ｾｦｩＺｈＺｒｏｏｕｃｔ＠ a The competition Is aggressive and on the attack al all price points _ I ------·- ＭｰＺｳｾｾｾ［ＬｨＭ Ｔｾ＠ ---ｾ＠ --- ｾ ｾ＠ TOmmy Bahama . VMan Westwood Tommy Bahama $83 Medium S200+ ｔｲ･ｴ ｾ ｯｲｮ＠ Ｄ ｾ Ｎ＠ ff_) ｾ Ｓ＠ ｾｾｾ＠ $80···; -._.-- - ｾ＠ ｾ＠ ｾ Ｍ ｾ ｐｵｭ｡＠ ｾ＠ TnitornＤＱＳ ｾ＠ * --;sｾ 4, ＬＺ＠ .$60 Ｍ ｾ ｾ＠ ｾ Ｍ ｾ＠ .. Pony ｾ＠ . . $58 ProKedS ｾ ＭＭＭ _._..,_
ＤＶＲ ｾ＠ I • ｦｾｴ＠ Ｍｾ ｾ＠ ｾＧ＠ PF ｾ＠A ｾ＠ ,Ｌ ·f--..ＭｾＮｊ＠ , ｾＮＱＺＭＭＢ［ｬｐ Ｎａ＠ 6.uane Peter $50 Kang• Rao ｾ＠ ｾ＠ ｾ＠ Kanga Roo $40 ｐ ｯｮｹ ｾ＠ ｾ＠ $45 $45 Imitation is the sincerest form of wishing we had a design patent! * conVERSE
* Converse is th e leader in a fragmented market pl ace
* c onVERSE
Tn addition, the evidence shows that the midsole design trade dress is commonplace in the
25 PUBLTC VERSION market: ( 1) the 2000 edition of "The Com pl etc Foot\.vcar Dictionary" i llustratcd,. as the exemplary definition of a sneaker, a "classic Keels" sneaker bearing the CMT (See RX-24 78.005); and (2) the Transportation Security Administration uses an advertisement showing a generic sneaker bearing the CMT to eel ucate travelers that children 12 years old and younger do not have to take off their shoes for the sccw·ity screening at the airport. See RX-7698C at Q. 89 (citing
RX-8629).
Based on the foregoing evidence of extens.ive use by multiple third-parties oftbc CMT for the last eighty years, the Commission finds that the average consumer prior to the first alleged infringement in 2003 was likely aware ofthis third-party use, which would lead them to associate the CMT design with multiple sources, and therefore substantially diminishes any secondary meaning in Converse's mark. Of particular note, Figure 3 above shows a market saturated with shoes bearing the CMT from multiple sources.
Similar to the facts of Echo Travel, the record evidence here does not just show random, irrelevant third-party use, but third-party use of the same mark to promote the same goods to the same consumer class. See Echo Travel, 870 F.2d at 1269 (third-party use of a substantially similar mark to promote the same goods or services to the same consumer class weighs against a finding that the consumer class associates.the mark \vi th one source); see also Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401, 1403 (Fed. Cir. 1984) ("When the record shows that purchasers are confronted with more than one (let alone numerous) independent users of a term or device, .... distinctiveness. on which purchasers may rely is lacking under such circumstances."); Mana
26 PUBLIC VERSION
Products, Inc. v. Colwnbia Cosmetics Manufacturing, Inc., 65 F.3d 1063, 1071 (2d
CirJ 995) (holding that the color black does not identify the plaintiff as the source of the cosmetics
because "countless numbers of cosmetics companies ... sell black compacts."). When consumers
of CTAS shoes have been inundated with images of third-party shoes bearing the CMT over at
least the last eighty years as shown here by the record evidence, these consumers may well associate the CMT with more than one source as the "CBSC Only'' survey indicates. See
RX-1667 at QQ. 34-39.
Moreover, the Commission finds that the ID erroneously discoun ted the record evidence concerning all subfactors of factor 2 (exclusivity of use) including sub factors "private label" and
"sales of shoes alongside competitors." See ID at 47-48. Since evidence of third-party use from the 1980s and earlier is relevant to the date of first infringement in 2003 due to the longstanding, concrnTcnt use by third parties here, 'vVC find relevant the record evidence that Converse in the
1970s and 1980s knowingly (1) made "The Winner" shoes bearing the CMT exclusively for Sears; and (2) permitted its CTAS shoes to be sold alongside third-party shoes bearing the CMT. See
RX-2087C at Q. 109; RX-2091C at Q. 37; RX-2208 (1976 J.C. Penney Spring/Summer Catalog showing "The Wiru1er" shoes bearing the CMT); R.X-2274; RX-2784; RX-2305.005; RX-8815;
RX-2307.003 (Nike shoes bearing the CMT alongsid e Converse advertisement); RX-2208;
RX-2305; RX-2307; RX-2087 at Q. I 09-10). The "Winner" shoes were promoted alongside advertisements for non-Converse shoes, i.e. , "the Gamebuster," bearing the CMT. See
RX-2091C at Q. 37; RX-2208. The record evidenc.e also indicates that these private label and
27 PUBLIC VERSION
comparison ads were widespread across the country. ld. Thus any consumer seeing these
private label and comparison images would likely associate the CMT with more than one source.
Based on the totality of record evidence, particularly with respect to secondary meaning
factors 2 and 7, the Commission concludes that the '753 trademark is invalid.8 The Commission
therefore reverses the ID's conclusion and detennines that the ' 753 trademark is invali.d based on
lack of secondary meaning as proven by a preponderance of the evidence. As a result of this
action, the Commission detennines that there is no violation of section 33 7 with respect to the both
the common law and registered CMT design.
B. The ALJ's Findings of Infringement
The Commission affirms the !D's finding that there is a likelihood of confusion with respect to the CMT for specific accused footwear products if the CMT is not invalid, and affirms that there is no likelihood of confusion with respecl to the CMT for other specific accused footvvear products, as set forth in the JD, regardless of invalidity. See ID at 64-104.
IV. CONCLUSION ON VIOLATION
For the reasons discussed herein, the Commission determines to reverse-in-part the ALJ's final ID such that the '753 trademark is invalid based on lack of secondary meaning. The
Commission also affirms the ID s finding that the asserted common law rights associated with the federally-registered '753 trademark are in valid . The Commission also affirms the ID's :finding
8 The Commission affords no weight to any su rvey evidence the 10 found to be flawed and unreliable. See ID at 16-36. Accordingly, to the extent that the ALJ relied upon surveys that he discredited (ID at 46), the Commission gives those surveys no weight in determining whether there was exclusivity of use of the C 1T design.
28 PUBLIC VERSION
that specific accused footwear products infringe the ' 753 trademark if the trademark is not invali.d,
and at1inns the ID 's finding that other specific accused footwear products do not infringe the ' 753
trademark regardless of invalidity. These actions result in a finding of no violation of section 33 7 with respec t to the '753 trademark .
With respect to the COT marks, the Commission vacates the ID's finding that there is no viOJ ation of section 33 7 as to the asserted common law rights associated with the designs depicted
in the federally-registered' 103 and '960 trademarks due to invalidity. See ID at 129-32. The ID correctly found infringement as to the ' 103 and ' 960 trademarks, and previously granted summary determination of validity and enforceability of both the asserted common law and federally-registered rights in the designs depicted in the 103 and '960 trademarks. See Order No.
130, at 1 n.1 (July 15, 2015). The TD 's finding of no violation with respect to these common law rights is moot, however, in view of the ID 's find ing (unreviewed) of a violation with respect to the federall y-registered rights in th e ' 103 and '960 trademarks by defaulting respondent Foreversuh since the scope of the common law and federall y-registered rights in these trademarks is co-extensive.
V. REMEDY, PUHLlC INTEREST, AND BONDING
A. Remedy
In a section 337 proceeding, the Commission has "broad discretion in selecting the form, scope, and extent of the remedy." Visco.fan, SA. v. Un ited States Int '/ Trade Comm 1n, 787 F.2d
544, 548 (Feel . Cir. 1986). Based on the record in thi s investi gat ion, and for the reasons detailed .
29 PUBLIC VERSION
below, the Commission has determined lo issue a general exdusion order ("GEO") pursuant to 19
U.S.C. § l 337(d)(2), prohibiting the unlicensed importation of certain footv.. car products covered
by one or more of the ' I 03 and '960 trademarks. We also find that this remedial order is not
contrary to the public interest.
Under section 337, the Commission is authorized to issue a GEO excluding all infringing
goods regardless of the source when the conditi.ons of section 337(d)(2) or (g)(2) are met. See 19
U.S.C. §§ 1337 (d)(2), (g)(2). In the present investigation, some respondents appeared before
the Commission to contest the allegations in the complaint, but other respondents failed to
appear and therefore defaulted. ID at 1-10. Under these circumstances, section 337(d)(2) is
the appropri ate statutory provision governing issuance of a GEO. See Certain Sildenafil or Any
Pharmaceutically Acceptable Salt Thereof such as Sildenajil Citrate, and Products Containing
Same, Inv. No. 337-TA-489, Com.m ' n Op. at 4 (July 23, 2004) (finding that the issuance of a
GEO under section 337(d)(2), rather than 337(g)(2), was appropriate when not all respondents
failed to appear to contest the investigation); see also Certain Energy Drink Products, lnv. No.
337-TA-678, USITC Pub. No. 4286, Comm'n Op. at 4-7 (Nov. 2011); Certain Toner
· Cartridges and. Components Thereof, In v. No. 337-TA-740, USJTC Pub. o. 4376, Comm'n
Op. at 24 (Feb. 2013).
Accordingly, under section 337(d)(2):
The authority of the Commission to issue an exclusion from entry of articles shall be limited to persons determined by the Commission to be violating this section unless the Commission determines that --
30 PUBLIC VERSION
(A) a general exclusion from entry of articles is necessary to prevent circumvention of an exclusion order limited to products of named persons; or
(B) there is a pattern of violation of this section and it is difficult to identify the source of infringing products.
19 U.S.C. § 1J37(d)(2 ). In determining whether either criterion is satisfied, the Commission may look not only to the activities of active respondents, but also to those of non-respondents as well as respondents who have defaulted or been terminated from an investigation. See Certain
Electronic Paper Towel Dispensing Devices and Components Thereof, lnv. i o. 33 7-TA-7 J 8,
Comm'n Op. at 13-14, 16 (Dec. 1, 2011); Certain Coaxial Cable Connectors and Components
Thereof and Products Containing Same, Inv. Io . 337-TA-650, Comm'n Op. at 59 (April 14,
2010).
As detailed below, the record in the present investigation wa1Tants the issuance of a GEO under both subparagraph (A) and subparagraph (B) of subsection 337(d)(2). See 19 U.S.C. §
133 7( d)(2).
I . Circumvention OfAn LEO
The record shows a high likelihood that defaulting respondent Foreversun would circumvent an LEO, with respect to the '103 and '960 trademarks, by employing various practices, including selling and importing the infringing products using large business-to-business internet portals that enable third-party vendors and foreign agents or trading companies to operate as intermediaries between such a foreign manufacturer of knockoff
31 PUBLIC VERSION products and U.S. distributors and retailers. RD al 135. For example, the record shows that the various trading companies that sell the infringing products are mostly selling agents or shell companies with a mail drop under fictitious names, emails, and phone numbers. Id.
Therefore, the record shows that absent a GEO, defaulting respondent Foreversun could easily
circumvent an LEO by shipping products to their customers from various third-party manufacturers and intermediaries using fictitious contact information. Therefore, the
requirement of subsection 19 U.S.C. § 1337(d)(2)(A) is satisfied here.
2. Pattern Of Violation OfSection 33 7 Where It Is Difficult To Identify Source OfInfringing Products
The record in this investigation shows that there is a widespread pattern of importation and sale of infringing footwear products throughout the United States. Converse's complaint named thirty proposed respondents in this investigation. ID at 1-2. Moreover, the record shows that there arc numerous potentially infringing footwear products manufactured and/or sold by third-parties not named as respondents. RD at 135-36 (citing CX-229C at QQ.
182-95, 261-89; CX-245C at QQ. t 8-116); see also Complaint at iii! 758-63, Exhibits 220-24.
This record evidence also shows that the sources of the imported products are difficult to identify. Specifically, Converse's Senior Director of Brand Protection, Mr. Foley, described
Conver e's enforcement efforts as [[
]] Id (citing CX-245C at Q. 58). Fuither,
.evidence .of this nature indicating numerous onlinc sales of infringing imported goods can
32 PUBLIC VERSION
constitute a widespread pattern of violation of section 33 7. Id. ; see also Certain Loom Kits for
Creating Linked Articles, Inv. o.· 337-TA-923, Comm'n Op. at 14 (June 26, 2015).
In sum, the record shows that a pattern of violati.on exists and that it is difficult to identify the source of infringing products, thus satisfying the requirements of 19 U.S.C. § 1337(d)(2)(B).
B. Public interest
Before issuing a remedy for a violation of section 337, the Commission must consider the
effect of the remedy on certain public interest considerations: (1) the public health and welfare;
(2) competitive conditions in the U.S. economy; (3) the U.S. production of articles that are like
or directly competitive with those which are the subject of the investi gation; and (4) lJ.S.
consumers. 19 U.S.C. §§ 1337(d), (f), (g); Certain Ink.Jet Print Cartridges and Components
· Thereof, Inv. No. 337-TA-446, Comm'n Op. at 14 (October 2002). Both the IA and Converse
submit that the public interest factors do not weigh against the ALJ' s ｲ･｣ｯｭｭ ｾ ｮ､ｾ､＠ remedy in
th.is investigation.
We find that the evidentiary record in this investigation does not indicate that any of the
above-referenced factors raises public interest concerns that would preclude issuance of the
remedial orders in this investigation. The record does not support a finding of any specific harm
to the public health, safety, or welfare sufficient to preclude issuance of the proposed remedfal
order. As Converse points out, the subject products consist of casual shoes, bearing designs
that cause consumer confusion with genuine Converse products bearing the COT designs.
Converses Remedy ·Resp. ·at 33. Furthermore, the competitive conditions are robust in the
33 PUBLIC VERSION
United States economy for footwear products. Based on the record, Cori.verse and other third-parties in the United Stales appear to be able to replace the products at issue with their own like or directly c-0mpctitive, non-infringing articles within a commercially reasonab.le time after the exclusion orders go into effect. ld. at 35. Therefore, U.S. consumers would have access to competitive products from at least Converse and these third-parties, and any exclusion order would have minimal impact on competitive conditions in the United States economy and the production of like or directly competitive articles in the United States.
Based on the foregoing, \Ne find that entry of the remedial order sought by Converse would not be contrary to the public interest in this investigation.
C. Bonding
Upon the entry of the remedial orders, a respondent may continue to import and sell its products during the sixty (60) day period of Presidential review subject to posting a bond. 19
U.S.C. § 1337(j)(3). The amount of the bond is determined by the Commission and must be sufficient to protect a complainant from any injury. id. ; 19 C.F.R. § 210.50(a)(3). Both the IA and Converse agree that, given the state of the cvidentiary record the bond amount should be set at 100 percent of the entered value of the accused products as no reliable price differential can be detennined for the defaulting respondent. See Converse's Remedy Resp. at 33; IA's Resp. at 45.
A 100 percent bond is often assigned when reliable pricing information is unavailable in the ca e of a defaulting respondent, which is the case here since Foreversun did not participate in discovery. See Certain Oscillating Sprinklers, Sprinkler Components, and
34 PUBLIC VERSION
No zzles, Inv. No. 337-TA-448, Limited Exclusion Order at 4-6 (Mar. 4, 2002), Certain Energy
Drink Products, Inv. No. 337-TA-678, Comm'n Op. at 9-10 (Sept. 8, 201 O); Certain Radio
Control Hobby Transmitters and Receivers and Products, Inv. No. 337-TA-763, Comm'n
Notice (Sept. 30, 2011), Certain Birthing Simulators and Associated Systems, Inv. No.
337-TA-759, Comm'n Notice (Aug. 29, 2011); Certain Awomotive Vehicles and Designs
Th erefor, Inv. No. 337-TA-722, Comm'nNotice (Mar. J 0, 2011); H. REP.1.00-40, Pts. 1-6. pp.
161-162 (1987). Accordingly, the ALJ recommended a bond of 100 percent of the entered value (per pair) of their accused footwear products during the 60-day period of Presidential review. RD at 142.
We agree that the record in the present investigation lacks sufficient pricing evidence with respect to accused footwear products bearing the COT designs because so many respondents settled or defaulted without providing such evidence. Accordingly, we have detennined to set the bond at 100 percent of the entered value (per pair) of the infringing footwear products during the period of PresidentiaJ revi ew.
VI. CONCLUSION
The Commission has determined that there has been a violation of section 337. Having considered the AL.l 's recommended detennination, the parties' submissions, and the cvidentiary record, the Commission has determined to issue a general exclusion order prohibiting the unlicensed entry of footwear products that infringe the' I 03 or '960 trademarks. The
Commission further has determined that the pubiic interest factors enumerated in section
35 PUBLIC VERSION
337(d)(1) (19 U.S.C. § 1337(d)(l)) do not preclude the issuance ofthe general exclusion order.
Finally, lhe Commission has determined that there should he a bond in the amount of 100 percent of the entered value (per pair) of the covered products during the period of Presidential
review.
By order of the Commission.
Lisa R. Barton Secretary to the Commission
Issued: July 6, 2016
36 CERTAIN FOOTWEAR PRODUCTS Inv. No. 337-TA-936
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached COMMISSION OPINION has been served by hand upon the Commission Investigative Attorney, Sarah J. Sladic, Esq., and the following parties as indicated, on July 7, 2016.
Lisa R. Barton, Secretary U.S. Jntemational Trade Commission 500 E Street, SW, Room 112 Washington, DC 20436
On Behalf of Complainant Converse Inc.:
' V. James Adduci, II, Esq. D Via Hand Delivery ADDUCI, MASTRIANI & SCHAUMBERG, LLP D Via Express Delivery 1133 Connecticut Avenue, 1 .W., 1th Floor r8J Via First Class Mail Washington, DC 20036 D Other: ------On Behalf of Respondent Wal-Mart Stores, Inc.:
Mareesa A. Frederick, Esq. D Via Hand Delivery 'FINNEGAN, HENDERSON, FARABOW, D Via Express Delivery GARRETT & DUNNER LLP r8J Via First Class Mail 901 New York Avenue, NW D Other: Washington, DC 2000 l ------
On Behalf of Respondent Skecbers U.S.A., Inc.:
Barbara A Murphy, Esg. D Via Hand Delivery FOSTER, MURPHY, ALTMAN & NICKEL, PC D Via Express Delivery 1899 L Street, NW, Suite 11 50 r8J Via First Class Mail Washington, DC 20036 D Other: ------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. 0 Via Hand Delivery FOX ROTHSCHILD LLP 0 Via Express Delivery Princeton Pike Corporate Center ｾ＠ Via First Class Mail 997 Lennox Drive, Building 3 0 Other: Lawrenceville, NJ 08648-23 J 1 ------
On Behalf of Respondent New Ba.lance
Thomas S. Fusco, Esq. 0 Via Hand Delivery FISH & RICHARDSON P.C. 0 Via Express Delivery 111 1425 K Street, NW, 11 Floor ｾｖｩ｡＠ First Class Mail Washington, D.C. 20005 0 Other:------IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
HIGHLINE UNITED, LLC, U.S. Reg. No. 4,065,482
Petitioner, Mark: Shoe Design
Cancellation o. - ---- v.
CONVERSE, INC.,
Respondent.
CERTIFICATE OF EXPRESS MAIL
EXPRESS MAIL Mailing Label Number: EF 115716228 US
Date of Deposit: December 5, 2016
I hereby ce1iify that Petitioner Highline United, LLC's Petition for Cancellation is being deposited with the United States Postal Service "Express Mail Post Office to Addressee" service under 3 7 CFR § 1.10 service on the date indicated above and is addressed to the Commissioner for Trademarks, Attn: Trademark Trial and Appeal Board, P.O. Box 1451 , Alexandria, Virginia 22313-1545.
Date: 5 December 2016 By: /michael leonard/ Leonard N. Budow Michael J. Leonard Christopher D. Olszyk, Jr. Fox Rothschild LLP 997 Lenox Drive, Bldg. 3 Lawrenceville, New Jersey 08648-2311 212.878.7902 (direct) 609.896.1469 (fax) [email protected] m leo nard@foxrothschi ld .corn
ACTIVE 43523942vl 12/05/2016
EXHIBIT 2 UNITED STATES INTERNATIONAL TRADE COMMISSION Washington, DC
In the Matter of Investigation No. 337-TA-_ CERTAIN FOOTWEAR PRODUCTS
COMPLAINANT CONVERSE INC.'S COMMISSION RULE 210.8(b) STATEMENT ON THE PUBLIC INTEREST
In support of its Complaint, filed October 14, 2014, and pursuant to Commission Rule
210.8(b), Complainant Converse Inc. ("Converse") respectfully submits this Statement of Public
Interest. Converse seeks exclusion orders and cease and desist orders against certain footwear
products (the "Accused Products") that violate Converse's common law and federally registered
trademark rights in the appearance of the midsole and outsole designs used in connection with
Converse shoes, including but not limited to U.S. Trademark Registration Nos. 4,398,753;
3,258,103; and 1,588,960 (the "Asserted Trademarks"). Remedial orders directed to the Accused
Products would not have an adverse effect on the public health or public welfare in the United
States, competitive conditions in the United States economy, the production of like or directly competitive articles in the Unites States, or on U.S. consumers.
I. USE OF THE ACCUSED PRODUCTS IN THE UNITED STATES
The Accused Products at issue in the Complaint are certain footwear products bearing designs that violate Converse's rights in the Asserted Trademarks under Sections 32(1), 43(a), and 43(c) of the Lanham Act (15 U.S.C. §§ 1114(1) & 1125(a), (c)), and under the common law.
The Asserted Trademarks relate to iconic midsole and outsole designs commonly used in connection with Converse shoes. Converse has continuously and consistently manufactured, promoted, and sold shoes bearing the Asserted Trademarks for nearly 100 years. The Accused Products consist of shoe designs being promoted to U.S. consumers of all
ages that are likely to cause consumer confusion and/or dilution of one or more of the Asserted
Trademarks. The Accused Products are imported into the United States and sold through many
channels, including retail stores and websites, department stores, independent shoe retailers,
value channels, and the Internet. Brick and mortar retailers often also sell Accused Products
through online sites.
II. THE REQUESTED REMEDIAL ORDERS POSE NO PUBLIC HEALTH, COMPETITION OR WELFARE CONCERNS
The issuance of the exclusion orders and cease and desist orders requested in this
investigation would not adversely affect the public health or public welfare in the United States,
competitive conditions in the United States economy, the production of like or directly
competitive articles in the Unites States, or U.S. consumers. The Accused Products represent a
very small subset of the U.S. shoe market and are limited to shoes bearing, without authorization,
one or more of the Asserted Trademarks. If the Accused Products were excluded from the
United States, U.S. consumers would continue to have access to an immense quantity of non- infringing footwear at all price points. As non-essential consumer products, for which many non-infringing alternative designs exist, exclusion of the Accused Products would not implicate the public interest.
There are no public health implications from the exclusion of the Accused Products; the
Commission has never previously found exclusion of footwear products to implicate public health or public welfare concerns, and there are no special circumstances here that would support a different result. See Certain Foam Footwear, Inv. No. 337-TA-567 (Remand), Comm'n Op. at
4-8 (Aug. 2, 2011) ("the public interest does not preclude" a general exclusion order directed to infringing foam footwear and cease and desist orders directed to certain respondents); Sneakers
2 with Fabric Uppers and Rubber Soles, Inv. No. 337-TA-118, U.S.I.T.C. Pub. No. 1366, Views
of the Comm'n at 28 (March 1983) ("The sneakers in question are not essential to the public
health or welfare."); Certain Flexible Foam Sandals, Inv. No. 337-TA-047, U.S.I.T.C. Pub. No.
947, Comm'n Mem. Op. at 9 (February 1979) (there is "[n]o evidence which would show an
adverse effect on the relevant public-interest factors by the exclusion of infringing sandals from
entry into the United States"). 1
Exclusion of the Accused Products also would not adversely affect competitive
conditions in the United States. As previously noted, there are many sources of non-infringing
shoes that would remain available. The Asserted Trademarks, moreover, cover non-functional
designs. The Proposed Respondents could remove the Asserted Trademarks without in any way
limiting the utility of the Accused Products and many alternative non-infringing designs are
available. The purpose of the relief requested by Converse is to ensure consumer clarity and fair
competition in the United States shoe market by ending the unauthorized use of the Asserted
Trademarks by the Proposed Respondents. The Proposed Respondents would remain free to
import and sell directly competing shoes at all existing price points - after removing the Asserted
Trademarks.
1 Similarly, the Commission has found that public interest considerations do not outweigh remedial relief in investigations involving wearable articles of clothing and related accessory products. See, e.g., Certain Handbags, Luggage, Accessories, and Packing Thereof, Inv. No. 337-TA-754, U.S.I.T.C. Pub. No. 4387, Comm'n Op. at 9-10 (Mar. 2013); Certain Acid• Washed Denim Garments and Accessories, Inv. No. 337-TA-324, U.S.I.T.C. Pub. No. 2576, Op. ofthe Comm'n at 26-27 (Nov. 1992); Certain Feathered Fur Coats and Pelts, and Process for the Manufacture Thereof, Inv. No. 337-TA-260, U.S.I.T.C. Pub. No. 2085, Comm'n Mem. Op. on Remedy, the Public Interest, and Bonding at 6 (May 1988); Certain Nut Jewelry and Parts Thereof, Inv. No. 337-TA-229, U.S.I.T.C. Pub. No. 1929, Views of the Comm'n at 21-22 (Nov. 1986); Certain Cloisonne Jewelry, Inv. No. 337-TA-195, U.S.I.T.C. Pub. No. 1822, Comm'n Op. at 7 (Mar. 1986).
3 Moreover, the public welfare favors the protection of U.S. intellectual property rights.
See Certain Two-Handle Centerset Faucets and Escutcheons, and Components Thereof, Inv, No.
337-TA-422, Comm'n Op. at 9 (Jun. 19, 2000). The protection of U.S. trademarks is in the
public interest because an essential purpose of trademark law is to protect U.S. consumers and
producers. See e.g. Mosely v. V Secret Catalogue, Inc., 537 U.S. 418, 428 (2003) ("Infringement
law protects consumers from being misled by the use of the infringing marks and also protects
producers from unfair practices by an 'imitating competitor."') The public welfare would benefit
from the prevention of consumer confusion in the U.S. marketplace as to the source, sponsorship,
or affiliation of the Accused Products, and to guard against the erosion of distinctive and famous
trademarks.
III. COMPLAINANT AND/OR THIRD PARTIES MAKE LIKE OR DIRECTLY COMPETITIVE ARTICLES THAT COULD REPLACE THE ACCUSED PRODUCTS, AND U.S. CONSUMERS WOULD NOT BE ADVERSELY IMP ACTED
Complainant has the capacity, itself, to meet the U.S. demand for footwear protected by the Asserted Trademarks. Additionally, very large volumes of competitive non-infringing footwear are available from many sources, including from many of the Proposed Respondents.
Shoes bearing the Asserted Trademarks comprise a small, specialized subset of the overall shoe market and the Proposed Respondents would be free to continue to import their existing shoes into the United States if the designs were modified to remove the Asserted Trademarks. There are no public interest concerns where domestic demand for a complainant's products can be met by the complainant and its competitors whose products do not infringe the complainant's intellectual property rights. Inkjet Ink Supplies and Components Thereof, Inv. No. 337-TA-691,
Comm'n Op. on Remedy, the Public Interest, and Bonding at 15 (Jan. 28, 2011) ("There is no evidence that domestic demand for [Complainant's] inkjet cartridges cannot be met by
4 [Complainant] and its legitimate competitors, i.e., manufacturers and retailers ofinkjet cartridges
who do not infringe the patent claims at issue. Thus, the record does not support a finding that
11 issuance [of] the remedial orders is precluded by consideration of the public interest factors. )
In sum, if the requested remedial orders are issued by the Commission, U.S. consumers
would continue to have available to them in the United States a wide variety of footwear
products, at a variety of price points, including products of Complainant and non-infringing
products from the Proposed Respondents and others. Because alternatives exist, the exclusion of
Accused Products will not negatively impact U.S. consumers.
IV. CONCLUSION
For the foregoing reasons, there are no public interest concerns that would preclude the
Commission from issuing the remedial orders requested by C
Dated: October 14,2014
V. ,II D a Tanner Okun Jonathan J. Engler Thomas R. Bums, Jr. AshaAllam Evan H. Langdon Lauren E. Peterson ADDUCI, MASTRIANI & SCHAUMBERG, LLP 1133 Connecticut Avenue, N.W., 12th Floor Washington, DC 2003 6 Telephone: (202) 467-6300 Facsimile: (202) 466-2006
5 Christopher J. Renk Erik S. Maurer Michael J. Harris Katherine Laatsch Fink Audra C. Eidem Heinze Aaron P. Bowling BANNER & WITCOFF, LTD. Ten South Wacker Drive, Suite 3000 Chicago, IL 60606 Telephone: (312) 463-5000 Facsimile: (312) 463-5001
Counsel for Converse Inc.
6 UNITED STATES INTERNATIONAL TRADE COMMISSION Washington, DC
In the Matter of Investigation No. 337-TA-_ CERTAIN FOOTWEAR PRODUCTS
COMPLAINT UNDER SECTION 337 OF THE TARIFF ACT OF 1930, AS AMENDED
COMPLAINANT PROPOSED RESPONDENTS
Converse Inc. Skechers U.S.A., Inc. One High Street 228 Manhattan Beach Boulevard North Andover, Massachusetts 01845 Manhattan Beach, CA 90266 978-983-2774 800-746-3411 info@skechers. corn COUNSEL FOR COMPLAINANT www.skechers.corn
V. James Adduci, II Wal-Mart Stores, Inc. Deanna Tanner Okun 702 SW 8th Street Jonathan J. Engler Bentonville, AR 72716-8611 Thomas R. Burns, Jr. 479-273-4000 AshaAllarn www. walrnart.corn Evan H. Langdon Lauren E. Peterson A-List, Inc., d/b/a Kitson ADDUCI, MASTRIANI & SCHAUMBERG, LLP 115 South Robertson Boulevard 1133 Connecticut Avenue, N.W., 12th Floor Los Angeles, CA 90048 Washington, DC 20036 310-859-2652 Telephone: (202) 467-6300 www.shopkitson.corn Facsimile: (202) 466-2006 Aldo Group Christopher J. Renk: 2300 Ernile-Belanger Erik S. Maurer Montreal, Quebec Michael J. Harris H4R3J4 Katherine Laatsch Fink Canada Audra C. Eidem Heinze www. aldoshoes.corn Aaron P. Bowling BANNER & WITCOFF, LTD. Brian Lichtenberg, LLC Ten South Wacker Drive, Suite 3000 825 112 Silver Lake Boulevard Chicago, IL 60606 Los Angeles, CA 90026 Telephone: (312) 463-5000 www. brianlichtenberg.corn Facsimile: (312) 463-5001 Crnerit USA, Inc., d/b/a Gotta Flurt 13875 Ramona Avenue Chino, CA 91710 909-590-8898 www.crneritusa.corn www .gottaflurt.corn
Dioniso SRL via Pievaiola 166-f2 06132 Perugia Italy 39-075-528-7168 [email protected] www. blackdioniso. corn
Edarnarne Kids, Inc. 1911-34 Avenue SW Calgary, Alberta T2T 2C2 Canada
Esquire Footwear, LLC 385 5th Avenue, Second Floor New York, NY 10016 212-695-4140 www. esquirefootwear.corn
FILA U.S.A., Inc. 930 Ridgebrook Road Suite 200 Sparks, MD 21152 410-773-3000 www .fila. com
Fortune Dynamic, Inc. 21923 Ferrero Parkway City oflndustry, CA 91789 909-979-8318 www.fortunedynarnic.corn
Gina Group, LLC 10 West 33rd St # 312 New York, NY 10001 212-947-2445 [email protected] www.gmagroup.corn
11 H & M Hennes & Mauritz LP 215 Park A venue South, 15th floor New York, NY 10003 212-564-9922 www.hm.com
Highline United LLC d/b/a Ash Footwear USA 44 Mercer Street New York, NY 10013 617-333-3235 888-497-6005 [email protected] www.ashfootwearusa.com
Hitch Enterprises Pty Ltd d/b/a Skeanie Unit 3 13 Lyell Street Mittagong, New South Wales 2575 Australia www.skeanie.com
Iconix Brand Group, Inc., d/b/a Ed Hardy 1 1450 Broadway, 3rd and 4 h Floor New York, NY 10018 212-730-0030 [email protected] www.iconixbrand.com
Kmart Corporation 3333 Beverly Road Hoffman Estates, IL 60179 847-286-2500 www.kmart.com
Mamiye Imports LLC d/b/a Lilly ofNew York 1841 East 8th St Brooklyn, NY 11223 718-627-3579
Nowhere Co., Ltd. d/b/a Bape 4-22-3, Sendagaya Shibuya-Ku, 151-0051 Tokyo Japan us.bape.com
111 OPPO Original Corp 108 - 118 Brea Canyon Road City oflndustry, CA 91789-3086 909-444-3 000
Orange Clubwear, Inc., d/b/a Demonia Deviant 14726 Goldenwest Street, Suite B Westminster, CA 92683 954-986-4152 714-610-8200 www.orangeclubwear.com www.demonia.co.uk
Ositos Shoes, Inc., d/b/a Collection'O 9605 Rush Street South El Monte, CA 91733 626-579-4500
PW Shoes Inc. 58-30 Grand Avenue #3A Maspeth, NY 11378 718-366-6688 www .nypwshoes.com
Ralph Lauren Corporation 650 Madison A venue New York, NY 10022-1070 212-318-7000 www.ralphlauren.com
Shenzhen Foreversun Industrial Co., Ltd (alkla Shenzhen Foreversun Shoes Co., Ltd) Room 1109-1112 Fll Yousong Science &Technology Bldg. 1st Road ofDonghuan, Longhua Bao' an, Shenzhen Guangdong Province China Zip code: 518109 86-755-83545482 [email protected] www .en-foreversun.com
IV Shoe Shox c/o Zulily, Inc. 2601 Elliott Avenue, Suite 200 Seattle, Washington 98121 877-779-5614 www.zulily.com
Tory Burch LLC 11 West 19th Street, 7th Floor New York, NY 10011-4277 212-683-2323 www. toryburch.com
Zulily, Inc. 2601 Elliott Avenue, Suite 200 Seattle, Washington 98121 877-779-5614 www.zulily.com
Fujian Xinya I&E Trading Co. Ltd. Floor 4 Building A China Shoes Capital ChendaiTown, Jinjiang Fujian Province China Zip code: 362200 86-0595-82012227 86-0595-36205555 www.china0595.com
Zhejiang Ouhai International Trade Co. Ltd. Building B Jinzhou Building Wenzhou Avenue, Wenzhou Zhejiang Province China Zip code: 325000 86-577-88000112 www.jinzhougroup.com
v Wenzhou Cereals Oils & Foodstuffs Foreign Trade Co. Ltd. 1 24 h Floor International Trade Centre 236 Liming West Road, Wenzhou Zhejiang Province China Zip Code: 325003 86-577-88895700 86-577-88890816 [email protected] cofwz.com
VI TABLE OF CONTENTS
I. INTRODUCTION ...... ! II. THE CONVERSE TRADEMARKS AT ISSUE ...... 3 A. Converse's Iconic Midsole Design ...... 4 1. The Converse Midsole Trademark is Famous ...... 5 2. The Converse Midsole Trademark is Federally Registered ...... 13 B. Converse's Iconic Outsole Design ...... 14 C. No Licenses Under the Asserted Trademarks ...... l8 III. COMPLAINANT CONVERSE ...... 18 A. History of Converse ...... 19 B. Converse Brand Protection- Counterfeiters ...... 20 C. Converse Brand Protection- Knockoffs ...... 22 IV. PROPOSED RESPONDENTS ...... 24 A. Skechers U.S.A., Inc ...... 28 B. Walmart Stores, Inc ...... 38 C. A-List, Inc. d/b/a Kitson ...... 43 D. Aldo Group ...... 48 E. Brian Lichtenberg, LLC ...... 51 F. Cmerit USA Inc. d/b/a Gotta Flurt ...... 56 G. Dioniso, SRL ...... 60 H. Edamame Kids, Inc ...... 64 I. Esquire Footwear ...... 68 J. FILA U.S.A., Inc ...... 72 K. Fortune Dynamic, Inc ...... 75 L. Gina Group, LLC ...... 80 M. H & M Hennes & Mauritz LP ...... 83 N. Highline United LLC d/b/a ASH Footwear USA ...... 87 0. Hitch Enterprises Pty Ltd. d/b/a Skeanie ...... 91 P. lconix Brand Group, Inc. d/b/a Ed Hardy ...... 95 Q. Kmart Corporation ...... 99 R. Mamiye Imports LLC d/b/a Lilly ofNew York ...... 104 S. Nowhere Co. Ltd. d/b/a Bape ...... 108 T. OPPO Original Corp ...... 112 U. Orange Clubwear, Inc. d/b/a Demonia Deviant ...... 116
Vll V. Ositos Shoes, Inc. d/b/a Collection'O ...... 120 W. PW Shoes Inc ...... 123 X. Ralph Lauren Corporation ...... 128 Y. Shenzhen Foreversun Industrial Co., Ltd (aka Shenzhen Foreversun Shoes Co., Ltd) ...... 132 Z. Shoe Shox ...... 136 AA. Tory Burch LLC ...... 140 BB. Zulily, Inc ...... 143 CC. Fujian Xinya I&E Trading Co. Ltd...... 149 DD.Zhejiang Ouhai International Trade Co., Ltd ...... 153 EE. Wenzhou Cereals Oils and Foodstuffs Foreign Trade Co., Ltd...... 157 V. RESPONDENTS' UNFAIR METHODS OF COMPETITION AND UNFAIR ACTS .... 160 A. Trademark Infringement Under Section 32(1) ofthe Lanham Act (15 U.S.C. § 1114(1)) ...... 162 B. False Designation of Origin/Unfair Competition Under Section 43(a) of the Lanham Act (15 U.S.C. § 1125(a)) ...... 162 C. Common Law Trademark Infringement and Unfair Competition ...... 163 D. Dilution Under Section 43(c) of the Lanham Act (15 U.S. C. § 1125(c)) ...... 165 VI. SPECIFIC INSTANCES OF RESPONDENTS' UNFAIR IMPORTATIONS AND SALES ...... 166 VII. CLASSIFICATION OF THE ACCUSED PRODUCTS UNDER THE HARMONIZED TARIFF SCHEDULE OF THE UNITED STATES ...... 173 VIII.THE DOMESTIC INDUSTRY ...... 174 A. The Technical Prong ...... 174 B. The Economic Prong ...... 17 4 IX. INJURY TO THE DOMESTIC INDUSTRY ...... 178 X. RELATED LITIGATION ...... 214 XI. GENERAL EXCLUSION ORDER ...... 216 XII. REQUEST FOR RELIEF ...... 220 XIII.GLOSSARY OF TERMS ...... 221
vm EXHIBIT AND APPENDIX LIST
Exhibit No. Description Exhibit 1 Certified Copy ofU.S. Trademark Registration No. 4,398, 753 Exhibit 2 Certified Copy ofU.S. Trademark Registration No. 3,258,103 Exhibit 3 Certified Copy of U.S. Trademark Registration No. 1,588,960 Exhibit 4 Representative Images of Converse Shoes Over Time Exhibit 5C Confidential Declaration of Steven Monti On Behalf of Converse Inc. Exhibit 6 Exemplary Advertisements Featuring the Converse Midsole Trademark Exhibit 7 Exemplary Book Excerpts Featuring the Converse Midsole Trademark Exhibit 8 Printouts ofExcerpts from Chucks Connection Website Exhibit 9 Exemplary Articles Featuring the Converse Midsole Trademark Exhibit 10 Exemplary Photos of Celebrities, Athletes, Prominent Figures Wearing Converse Shoes Exhibit 11 Consent Judgments Entered in Favor of Converse Exhibit 12 Exemplary Advertisements Featuring Converse Outsole Trademark Exhibit 13 Printout of Motley Fool, Nike Sets a Power Brand Free and Reaps Billions, Website Article Exhibit 14 Printout ofWSAShow.com as it appeared on January 2007, as viewed through Archive.Org Exhibit 15 Printout of Contact Us Page from Skechers' Website Exhibit 16 California Secretary_ of State Business Entity Detail for Skechers Exhibit 17 Forbes, Sole Survivors, Article Exhibit 18 Printout of Fast Company, Toms vs. Bobs: How Skechers Shot Themselves in the Foot, Website Article Exhibit 19 Compilation Printouts of Skechers' 'Daddy'$ Money' Website Articles (annotated) Exhibit 20 Representative Images of Skechers' Accused Products Exhibit 21 Printout of"Mens Casual Shoes" from Skechers' Website Exhibit 22 Compilation Printouts of Search Results for "Chuck Taylor" and "Chucks" on Skechers' Website Exhibit 23 Declaration of Mary C. ("Kate") Schrader Exhibit 24 Printout ofExcerpt from Walmart Corporate Website Exhibit 25 Arkansas Secretary of State Corporate Records for Walmart Exhibit 26 Printout ofFast Company, The Wal-Mart You Don't Know, Website Article Exhibit 27 Printout of Oil & Wool, Wal-Mart's $12 chuck taylor clones that everyone is talking about, Website Article Exhibit 28 Compilation Printouts of Customer Reviews ofWalmart Shoes (annotated) Exhibit 29 Representative Images ofWalmart's Accused Products Exhibit 30 Printout of Shoes from Walmart's Website Exhibit 31 Compilation Printout of Search Results for "Converse" and "All Star" on Walmart's Website Exhibit 32 Printout ofExcerpt ofWalmart's Faded Glory Shoe for Sale on Walmart's Website
lX Exhibit 33 Printout of Kitson's Website Showing Kitson Locations Exhibit 34 California Secretary of State Business Entity Detail for A-List Exhibit 35 Printout of Wall Street Journal, How Stores Lead You to Spend, Website Article Exhibit 36 Representative Images of Kitson's Accused Products Exhibit 37 Printout ofExcerpt of Shoes from Kitson's Website Exhibit 38 Printout of Search Results for "Converse" on Kitson's Website Exhibit 39 Printout ofExcerpt ofDioniso Shoes for Sale on Kitson's Website Exhibit 40 Declaration of Kelly Greenberg Exhibit 41 Printout of Excerpt of Brian Lichtenberg Shoes for Sale on Kitson's Website Exhibit 42 Printout ofContact Us Page fromAldo's Website Exhibit 43 Printout ofHistory Page from Aldo's Website Exhibit 44 The Globe and Mail, Aldo 's Global Footprint, Article Exhibit 45 Representative Images of Aldo's Accused Products Exhibit 46 Printout ofShoes fromAldo's Website Exhibit 47 Compilation Printout of Exemplary Accused Products Promoted and Sold on Aldo 's Website Exhibit 48 Declaration of Bill Vincent Exhibit 49 Printout of Siblings with Style, The Product Review: ALDO Sneakers, Website Article Exhibit 50 Dun & Bradstreet Business Background Report for Brian Lichtenberg Exhibit 51 California Secretary of State Business Entity Detail for Brian Lichtenberg Exhibit 52 Printout ofBio Page from Brian Lichtenberg's Website Exhibit 53 Printout oflnfluxxx, The rise ofthe Bltees- But What's Next for Brian Lichtenberg, Website Article Exhibit 54 Representative Images ofBrian Lichtenberg's Accused Products Exhibit 55 Printout of Shoes from Brian Lichtenberg's Website Exhibit 56 Printout of Contact Page ofCmerit's Website Exhibit 57 California Secretary of State Business Entity Detail for Cmerit Exhibit 58 Printout ofWhat We Do Page ofGotta Flurt's Website Exhibit 59 Representative Images ofGotta Flurt's Accused Products Exhibit 60 Printout ofExcerpt ofGotta Flurt Shoes from 6pm.com Exhibit 61 Printout of Exemplary Gotta Flurt Accused Products Sold on Amazon.com Exhibit 62 Compilation Printout ofGotta Flurt Reviews from ForUnder.com and Ebay.com (annotated) Exhibit 63 Printouts ofExcerpts from Black Dioniso's Website Exhibit 64 Representative Images ofDioniso's Accused Products Exhibit 65 Printout from RAW Shoe Blog's Website Exhibit 66 Dun & Bradstreet Report for Edamame Kids Inc. Exhibit 67 Re}Jresentative Imag_es ofEdamame's Accused Products Exhibit 68 Printout of Exemplary Edamame Accused Products Sold on Sears.com Exhibit 69 Printout of Exemplary Edamame Accused Products Sold on SophiasStyle.com Exhibit 70 Printout ofEntity Information for Esquire NYS Department of State Website Exhibit 71 Compilation Printout of Excerpts from Esquire's Website Exhibit 72 Representative Images ofEsquire's Accused Products Exhibit 73 Printout of Shoes on Esquire's Facebook Page
X Exhibit 74 Representative Images ofEsquire's Accused Products From the World Shoe Accessories Trade Show Exhibit 75 Printout of Our Strengths Page from Esquire's Website Exhibit 76 Hoovers Profile Report for FILA Exhibit 77 Maryland Department of Assessments and Taxation Business Information for FILA Exhibit 78 Printout ofForbes, Rebound, Website Article Exhibit 79 Representative Images of FILA's Accused Products Exhibit 80 Printout of Shoes from FILA's Website Exhibit 81 Printout ofExemplary Accused Products Sold on Shoe Zoo Website Exhibit 82 Dun & Bradstreet Report for Fortune Dynamic Exhibit 83 California Secretary of State Business Entity Detail for Fortune Dynamic Exhibit 84 Printout of About Us Page from Fortune Dynamic's Website Exhibit 85 Representative Images ofFortune Dynamic's Accused Products Exhibit 86 Printout of Shoes from Soda Shoes' Website Exhibit 87 Printout ofExemplary Accused Products on ShoeStation.com Exhibit 88 Compilation Printout ofExcerpts from Gina Group's Website Exhibit 89 NYS Department of State Division of Corporations Entity Information for Gina Group Exhibit 90 Representative Images of Gina Group's Accused Products Exhibit 91 Printout of Excerpt of Gina Group Shoes Sold on Zulily.com Exhibit 92 Printout of Exemplary Gina Group Accused Products Sold on Zulily.com Exhibit 93 Compilation Printout of Excerpts ofH & M's Website Exhibit 94 NYS Department of State Division of Corporations Entity Information for H&M Exhibit 95 Printout of Daily Mail, H & M Accused of 'Having No Shame,' Website Article Exhibit 96 Representative Images ofH & M's Accused Products Exhibit 97 Printout of Shoes from H & M's Website Exhibit 98 Printout of Exemplary Accused Products Sold on H & M's Website Exhibit 99 Printout of Contact Information Page on ASH's Website Exhibit 100 NYS Department of State Division of Corporations Entity Information for ASH Exhibit 101 Representative Images of ASH's Accused Products Exhibit 102 Printout of Shoes from ASH's Website Exhibit 103 Printout of Exemplary Accused Products Sold on ASH's Website Exhibit 104 Printout of Contact Us Page from Skeanie's Website Exhibit 105 Representative Images of Skeanie' s Accused Products Exhibit 106 Printout of Shoes from Skeanie's Website Exhibit 107 Printout ofExemplary Skeanie Accused Products Sold on Stryde.com Exhibit 108 Printout of Contact Page from Iconix Brand Group's Website Exhibit 109 NYS Department of State Division of Corporations Entity Information for Ed Hardy Exhibit 110 Printout ofLA Review of Books, Hate the Brand, Love the Man: Why Ed Hardy Matters, from Website Exhibit Ill Representative Images ofEd Hardy's Accused Products Exhibit 112 Printout ofExcerpt ofEd Hardy Shoes on Macy's Website
XI Exhibit 113 Printout of Exemplary Ed Hardy Accused Products Sold on Design Imports Website Exhibit 114 Printout ofEzine @rticles, Unwanted association - Highrise Ed Hardy Women's Shoes- Chucks of the HiJ xii Exhibit 149 Printout of Excerpts from PW Shoes' Website Exhibit 150 NYS Department of State Division of Corporations Entity Information for PW Exhibit 151 Representative Images ofPW's Accused Products Exhibit 152 Printout of Shoes from PW's Website Exhibit 153 Printout ofExemplary Accused Products Sold on PW's Website Exhibit 154 Dun & Bradstreet Report for Ralph Lauren Corporation Exhibit 155 NYS Department of State Division of Corporations Entity Information for Ralph Lauren Exhibit 156 Reuter's Company Profile for Ralph Lauren Exhibit 157 Representative Images ofRalph Lauren's Accused Products Exhibit 158 Printout of Shoes from Ralph Lauren's Website Exhibit 159 Printout of Exemplary Ralph Lauren Accused Products Sold on Ralph Lauren's Website (from Google Cache) Exhibit 160 Printout of Forum Posts from Core77 Website (annotated) Exhibit 161 Printout of Contact Us Page on Shenzhen Foreversun Industrial Co., Ltd.'s Website Exhibit 162 Printout of About Us Page on Shenzhen Foreversun Industrial Co., Ltd.'s Website Exhibit 163 Representative Images ofForeversun's Accused Products Exhibit 164 Printout ofExcerpts ofExemplary Shoes on Foreversun's Website Exhibit 165 Printout ofExcerpt of Exemplary Accused Products from Foreversun's Website Exhibit 166 Washington Secretary of State Corporations Division Data for Zulily Exhibit 167 Hoovers Profile for Zulily Exhibit 168 Representative Images of Shoe Shox's Accused Products Exhibit 169 Printout of Exemplary Shoe Shox Accused Products sold on Zulily.com Exhibit 170 Compilation Printout of Contact Us and About Us Pages from Tory Burch's Website Exhibit 171 NYS Department of State Division of Corporations Entity Information for Tory Burch Exhibit 172 Representative Images of Tory Burch's Accused Products Exhibit 173 Printout ofExcerpt ofShoes from Tory Burch's Website Exhibit 174 Printout of Exemplary Tory Burch Accused Products Sold on Nordstrom's Website Exhibit 175 Representative Images ofZulily's Accused Products Exhibit 176 Printout of Shoes from Zulily' s Website Exhibit 177 Compilation Printout of Exemplary Zulily Accused Products Sold on Zulilly.com Exhibit 178 Compilation ofldentifying Information for Xinya Exhibit 179 Printout of Excerpts from Xinya's Website Exhibit 180C Confidential Excerpt oflmport Records for Xinya Exhibit 181 C Confidential Documents Relating to Seizure ofXinya Products (with translation) Exhibit 182 Compilation ofldentifying Information for Ouhai Exhibit 183C Confidential Excerpt oflmport Records for Ouhai Exhibit 184C Confidential Documents Relating to Seizure ofOuhai Products (with Xlll translation) Exhibit 185 Compilation ofldentifying Information for Wenzhou Exhibit 186 Compilation Printouts from Wan Wei's Website (translated) Exhibit 187C Confidential Excerpt oflmport Records for Wenzhou Exhibit 188C Confidential Documents Relating to Seizure ofWenzhou Products (with translation) Exhibit 189 Declaration of Erik S. Maurer Exhibit 190 Classification of Accused Products Under the Harmonized Tariff Schedule ofthe United States Exhibit 191 The Converse Midsole Trademark and Exemplary Images of the Chuck Taylor All Star Shoe Exhibit 192 U.S. Trademark Registration No. 4,398,753 and Exemplary Images of the Chuck Taylor All Star Shoe Exhibit 193 U.S. Trademark Registration No. 3,258,103 and Exemplary Images of the Chuck Taylor All Star Outsole Exhibit 194 U.S. Trademark Registration No. 1,588,960 and Exemplary Images of the Chuck Taylor All Star Outsole Exhibit 195 Printout of Customer Reviews of Skechers' Twinkle Toes Shuffles from Skechers.com Exhibit 196C Confidential Compilation oflntemal Converse Reports Exhibit 197 Printout ofCustomer Reviews of"Kitson style Converse" fromPolyvore.com Exhibit 198 Printout of Customer Reviews of"Gotta Flurt Women's Lenwood Fashion Sneaker" from Amazon. com Exhibit 199 Printout ofDiscussion Topic, "Gotta flurt vs. converse?" from Answers.Yahoo.com Exhibit 200 Printout of Overview of Black Dioniso Shoes from Lanecrawford.com Exhibit 201 Printout of Sales Posting of"Dioniso Vintage High All Star Converse" from Polyvore.com Exhibit 202 Printout of"My Dioniso Sneakers," Blog Article from Redscarpett.Blogspot.com Exhibit 203 Printout ofHashtag Mentions ofDioniso from Twitter.com Exhibit 204 Printout of"Trendology: Dioniso Geometric 3D Eco-Leather Sneakers," Blog Article from Fusionofeffects.com Exhibit 205 Printout of Advertisement of"Edamame Boys Converse Shoes" from Ebay.com Exhibit 206 Printout of Sales Posting of"Edamame Kids Solid Denim Chuck Taylor Shoes" from Ebay.com Exhibit 207 Printout ofCustomer Reviews of"Fila Men's FILA ORIGINAL CANVAS SE CASUAL SHOES" from Amazon. com Exhibit 208 Printout of Sales Posting of"H & M Converse-like sneakers" from Poshmark.com Exhibit 209 Printout of Sales Posting of"H & M converse shoes for a girl" from Ebay.com Exhibit 210 Printout of Customer Reviews of"Ash Women's Virgin Fashion Sneaker" from Amazon. com Exhibit 211 Printout ofCustomer Reviews of"Skeanie Toddler Canvas Shoe in White" from Babybootique.com XIV Exhibit 212 Printout of Customer Reviews of"Ed Hardy Women's Dakota Fashion Sneaker" from Amazon.com Exhibit 213 Printout of Customer Reviews of"Joe Boxer Women's Soren Canvas Sneaker" from M_ygofer.com Exhibit 214 Printout of Customer Reviews of Lilly ofNew York Shoes from Sulia.com Exhibit 215 Printout ofBAPE Ape Sta "Leopard" Pack, Blog Article from soleredemption.com Exhibit 216 Printout of Sales Posting of"Bape Baby Milo Men's Sneakers (Converse Style)" from Styleforum.net Exhibit 217 Printout of Sales Posting of"OPPO NE0-13 Women's converse Chuck Taylor style HI top snea[kers]" from Ebay.com Exhibit 218 Printout of Customer Reviews of"Demonia by Pleaser Men's Deviant-101 Lace- Up" from Amazon. com Exhibit 219 Printout of Customer Reviews of"Polo Ralph Lauren Men's Harvey Fashion Sneaker" from Amazon. com Exhibit 220 US. Footwear Imports- 2003-2013, American Apparel & Footwear Association (February 18, 2014) Exhibit 221 Printout ofFujian XINYA Import & Export Co., Ltd. Exemplary Products from Tradesoon.com Exhibit 222 Printout ofFujian XINY A Import & Export Co., Ltd. Classic Rubber Shoes from Tradesoon.com Exhibit 223 Printout ofFujian XINY A Import & Export Co., Ltd. Women's High Canvas Shoes from Tradesoon.com Exhibit 224 Compilation Printouts of Exemplary KnockoffWebsites Appendix Description No. Appendix 1 Certified Copy ofFile History for U.S. Trademark Registration No. 4,398,753 Appendix 2 Certified Copy of File History for U.S. Trademark Registration No. 3,258,103 Appendix 3 Certified Copy of File History for U.S. Trademark Registration No. 1,588,960 XV I. INTRODUCTION 1. This case is about protecting Converse Inc.'s trademark rights in an iconic shoe design. The shoe design at issue: "[was] ... the ultimate insider shoe for the top athletes back in the first 50 years of its existence, and then it was the ultimate outsider shoe. But it's always been a mainstream shoe, too. It sort of represents America." Whitney Matheson, Converse: 100 Years Young, USA Today, Mar. 12, 2008, at 3D (quoting Hal Peterson). 2. Complainant Converse Inc. ("Converse" or "Complainant"), requests that the United States International Trade Commission ("Commission" or "lTC") institute an investigation under Section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337 ("Section 337"), based on the unlawful importation into the United States, sale for importation into the United States, or sale within the United States after importation, of certain footwear products (collectively, "Accused Products") that violate registered and common law trademarks used in connection with certain Converse shoes. Shoes bearing one or more of the trademarks asserted in this matter are referred to as "Converse Shoes." 3. The proposed Respondents, Skechers U.S.A., Inc.; Wal-Mart Stores, Inc.; A-List, Inc., d/b/a Kitson; Aldo Group; Brian Lichtenberg, LLC; Cmerit USA, Inc., d/b/a Gotta Flurt; Dioniso SRL; Edamame Kids, Inc.; Esquire Footwear, LLC; FILA U.S.A., Inc.; Fortune Dynamic, Inc.; Gina Group, LLC; H & M Hennes & Mauritz LP; Highline United LLC d/b/a ASH Footwear USA; Hitch Enterprises Pty Ltd d/b/a Skeanie; Iconix Brand Group, Inc., d/b/a Ed Hardy; Kmart Corporation; Mamiye Imports LLC d/b/a Lilly ofNew York; Nowhere Co., Ltd. d/b/a Bape; OPPO Original Corp.; Orange Clubwear, Inc., d/b/a Demonia Deviant; Ositos Shoes, Inc., d/b/a Collection'O; PW Shoes Inc.; Ralph Lauren Corporation; Shenzhen 1 Foreversun Industrial Co., Ltd (alk/a Shenzhen Foreversun Shoes Co., Ltd); Shoe Shox; Tory Burch LLC; Zulily, Inc.; Fujian Xinya I&E Trading Co.; Zhejiang Ouhai International; and Wenzhou Cereals Oils & Foodstuffs Foreign Trade Co. Ltd. (collectively, "Respondents"), have engaged in unlawful acts in violation of Section 337(a)(l)(C) through their unlicensed importation, sale for importation, or sale after importation of Accused Products that infringe one or more of Converse's federally registered trademarks, namely U.S. Trademark Registration Nos. 4,398,753; 3,258,103; and 1,588,960. Certified copies ofthese registrations are attached as Exhibits 1 - 3. 4. In addition, Respondents have violated Section 337(a)(l)(A) by engaging in unfair methods of competition, false designations of origin, and/or likely dilution of one or more common law trademarks that Converse uses in connection with the Converse Shoes. Converse's registered and common law trademarks at issue in the proposed investigation are collectively referred to as the "Asserted Trademarks." 5. As required by Sections 337(a)(l) and (a)(2)-(3), an industry exists in the United States relating to Converse Shoes, all of which prominently feature the Asserted Trademarks. Converse Shoes sold domestically are designed and developed in the United States. To design and develop the Converse Shoes, Converse makes significant investments in plant and equipment, employs significant labor and capital, and makes substantial investments in the exploitation of the Asserted Trademarks through activities such as engineering, research and development, and the licensing of third-party rights. 6. The Respondents' unfair acts in violation of Section 337(a)(l)(A) have substantially injured, or threaten to substantially injure, Converse's domestic industry for Converse Shoes. 2 7. Because Respondents' conduct evidences likely circumvention of any limited exclusion orders that may issue and a pattern of violation, Converse seeks a General Exclusion Order pursuant to Section 337(d) excluding from entry into the United States all imported shoes that violate Converse's rights in the Asserted Trademarks. Converse further seeks cease and desist orders directing Respondents to halt the importation, marketing, advertising, demonstrating, warehousing of inventory for distribution, sale, and use of imported articles in the United States pursuant to section 337(f). II. THE CONVERSE TRADEMARKS AT ISSUE 8. The proposed investigation seeks to stop articles bearing unauthorized copies of the Asserted Trademarks and/or colorable imitations thereof from entering into the United States. The Asserted Trademarks include two distinct designs: (a) a shoe midsole design and (b) a shoe outsole design. I Because all of the Respondents use the midsole design and only some use the outsole design, the midsole design is discussed first in the sections that follow. 9. The Complaint also asserts separate common law and federally registered rights in the Asserted Trademarks. Because Converse acquired common law trademark rights in its midsole design and outsole design many decades ago, the sections that follow begin with a discussion of Converse's common law trademark rights followed by a description of Converse's federal trademark registrations. I The anatomy of a shoe is generally divided into three parts, (a) the ''upper" refers to the material (often canvas or leather) that more or less surrounds the top of a foot; (b) the "midsole" refers to the portion of a shoe between the upper and the outsole that often provides cushioning and/or support structure to the shoe; and (c) the "outsole" refers to the tread or bottom of a shoe ordinarily in contact with the ground. See Section XIII, Glossary of Terms. 3 A. Converse's Iconic Midsole Design 10. This Complaint asserts trademark rights in a distinctive midsole design made up of a toe bumper and a toe cap, plus either an upper stripe and/or a lower stripe (the "Converse Midsole Trademark"). The overall appearance of the Converse Midsole Trademark is shown in Figure 1 below. FIGURE 1: Appearance of the Converse Midsole Trademark Stripe ｾ＠ Toe Bumper 11. Converse first introduced a distinctive combination of design elements closely resembling the Converse Midsole Trademark on "All Star" high-top sneakers in 1917. By 1932, the Converse Midsole Trademark acquired its present-day appearance. In 1934, shoes bearing the design were eponymously renamed "Chuck Taylor" after a Converse salesman and basketball player. In 1957, Converse introduced a low top, or "oxford," version of shoes bearing the Converse Midsole Trademark. Converse has also used the Converse Midsole Trademark in connection with other footwear products, including but not limited to, "One Star" and "Star Player" shoe models. Consumers often refer to shoes bearing the Converse Midsole Trademark as "All Stars," "Chuck Taylors," "Chucks," or "Chuck sneakers." 12. All told, Converse has continuously manufactured, promoted, and sold shoes bearing the Converse Midsole Trademark for more than 80 years. Attached Exhibit 4 illustrates 4 representative images of Converse Shoes over time. Because of Converse's enduring use of the design, it became an iconic symbol of the Converse brand, and it has been revered by consumers from different eras and across diverse cultural backgrounds. The Design Museum's report on "Fifty Shoes That Changed the World" summed it up this way: The All-Star has long since strayed from the basketball pitch and now stands as one of the most iconic and versatile examples of twentieth-century footwear design. Rock and grunge no longer have a monopoly- whether worn with jeans or accessorizing a suit, the shoe's status transcends fashion categories and genres. Design Museum, Fifty Shoes that Changed the World 16 (Conran Octopus Ltd, 2009). 1. The Converse Midsole Trademark Is Famous 13. There are few, if any, product designs that can boast a history as storied and successful as shoes bearing the Converse Midsole Trademark. As a result of the persistent commercial success of shoes bearing the Converse Midsole Trademark, it is probably the most widely recognized design in the history of footwear. a. Converse Enjoys Voluminous Sales of Shoes Bearing the Converse Midsole Trademark 14. Since their introduction around 1917, Converse has sold approximately one billion pairs of shoes bearing the Converse Midsole Trademark worldwide. Over the past decade alone, Converse sold more than 200 million pairs of shoes bearing the Converse Midsole Trademark throughout the United States, earning Converse more than $3 billion in gross United States revenue. One source estimates that "[a]t least 60 percent of all Americans own at least one pair of chucks in their lifetime." Hal Peterson, Chucks! The Phenomenon of Converse Chuck Taylor All Stars 12 (Skyhorse Publishing, Inc. 2007). 15. The upper part of Converse Shoes has been described as a "blank canvas" because, whether made out of actual canvas or not, it provides myriad opportunities to tailor the 5 shoes to different consumer tastes. Consequently, Converse has manufactured and sold shoes featuring the Converse Midsole Trademark with upper components reflecting a variety of colors, patterns, materials, and embellishments, ranging in price from approximately $19 to $190. Vintage Converse Shoes have been auctioned for thousands of dollars. Recent examples of Converse shoes featuring the Converse Midsole Trademark are shown in Figure 2 below. FIGURE 2: Recent Examples of Converse Shoes Featuring the Converse Midsole Trademark b. Converse Distributes Shoes Bearing the Converse Midsole Trademark Through Many Different Channels and Market Segments 16. The broad appeal of the Converse Midsole Trademark is evidenced by its appearance in all walks of life - from the feet of a toddler taking her first steps to a celebrity on the red carpet. Converse has sold shoes featuring the Converse Midsole Trademark to men, women, and kids through various distribution channels at differing price points and across multiple market segments as set f011h in paragraphs 1 0 - 12 of the Confidential Declaration of Steven Monti, attached as Exhibit 5. 17. Converse' s distribution of shoes bearing the Converse Midsole Trademark occurs through a wide variety of channels. For example, Converse products bearing the Converse Midsole Trademark are distributed through Converse' s own retail stores and website; department 6 stores, such as Nordstrom, Kohl's and Macy's; independent shoe retailers, such as Journey's and DSW; value channels, such as Target; and the Internet, including online retailers, such as 6pm.com and Zappos.com. Brick and mortar retailers also tend to sell shoes bearing the Converse Midsole Trademark through online sites as well, for example: shop.nordstrom.com or www.target. com. c. Converse Engages in Ubiquitous Promotion of High-Quality Shoes Bearing the Converse Midsole Trademark 18. Converse has spent hundreds of millions of dollars advetiising and promoting shoes bearing the Converse Midsole Trademark. Converse's advertisements and promotions of the Converse Midsole Trademark have appeared in print, on the Internet, on billboards, in videos, and at retail. Over the past two fiscal years alone, Converse has spent approximately $30 million advetiising and promoting the Converse Midsole Trademark in the United States. Exemplary advertisements featuring the Converse Midsole Trademark are attached to this Complaint as Exhibit 6 and shown in Figure 3 below. FIGURE 3: Exemplary Advertisements Featuring the Converse Midsole Trademark •• ｾ＠ \• \. ｾ＠ T ,, II .\' ., 4-:h-1!" \ " unr ｊ ｬｮｾ ﾷ ﾷﾷｾ＠ 1ht• .. ICrnkMI•• Circa 1932 Converse Circa 1968 Converse Circa 1982 Converse Circa 1991 Converse Advertisement Advertisement Advertisement Advertisement 19. Converse also promotes shoes bearing the Converse Midsole Trademark through sponsored associations and collaborations with famous people and companies. For example, 7 Converse has collaborated with DC Comics, Dr. Seuss, the Rolling Stones, U2, Gorillaz, John Varvatos, Crayola, and the Simpsons, among many others. Exemplary shoe designs from collaboration-based product lines featuring the Converse Midsole Trademark are shown in Figure 4 below. FIGURE 4: Exemplary Collaborations Featuring the Converse Midsole Trademark 20. In 2012, Converse sold over 230,000 shoes from its collaboration with DC Comics, all bearing the Converse Midsole Trademark. Total sales ofthe Converse-De Comics collaborations alone totaled nearly $5,000,000. 21. Between June 2009 and May 2014, the media value of Converse's public relations and communications efforts relating to products bearing the Converse Midsole Trademark totaled more than $205 million and secured more than 2.5 billion commercial impressions in the United States. d. The Converse Midsole Trademark Receives Substantial Publicity, and Has Been Connected With Famous People, From Johnny Carson to First Lady Michelle Obama 22. The Converse Midsole Trademark is the subject of widespread and unsolicited public attention. This publicity extends from acclaim in books, magazines, and newspapers to frequent appearances in movies and television shows. As representative examples, Converse Shoes are the subject ofbooks including "Chucks!: The Phenomenon of Converse Chuck Taylor 8 All Stars" and "Chuck Taylor, All Star," where Chuck Taylor All Star shoes bearing the Converse Midsole Trademark are described as an icon of American footwear design. Likewise, an article in USA Today quotes the author of"Chucks!: The Phenomenon of Converse Chuck Taylor All Stars" stating: "It's been the ultimate insider shoe for the top athletes back in the first 50 years of its existence, and then it was the ultimate outsider shoe. But it's always been a mainstream shoe, too. It sort of represents America." Whitney Matheson, Converse: 100 Years Young, USA Today, Mar. 12, 2008, at 3D (quoting Hal Peterson) (Exhibit 9 at 7). Exemplary excerpts from these books are attached as Exhibit 7, and exemplary images are shown in Figure 5 below. FIGURE 5: Exemplary Books Featuring the Converse Midsole Trademark !k1 PUaomtlUUl of Coanne Chaclr: Taylor AU Stuo Bol !'Morton 23. The Converse Midsole Trademark has also been featured in numerous newspaper and magazine articles, and is the focus oflntemet chatter and fan sites such as chucksconnection.com, which celebrates the Converse Midsole Trademark and its presence on Converse Shoes throughout American culture. See The Chucks Connection, Hal Peterson Media Services, http://chucksconnection.com, Exhibit 8 (excerpt ofwebsite). Articles illustrating examples of unsolicited publicity surrounding the Converse Midsole Trademark are attached to this Complaint as Exhibit 9 and shown in Figure 6 below. 9 FIGURE 6: Exemplary Articles Featuring Converse Shoes and the Converse Midsole Trademark cr:IJl' -l.Ut151Jington post May2008 March2008 March2008 :•• February 2008 May2003 April2008 24. Over the last century, celebrities, professional athletes, and other prominent figures have been publicized wearing Converse Shoes. Photographs showing some of the famous people connected with the Converse Midsole Trademark are attached to this Complaint as Exhibit 10 and shown in Figure 7 below. 10 FIGURE 7: Exemplary Photographs of Celebrities, Professional Athletes, and Other Prominent Figures Featuring the Converse Midsole Trademark Actor Sylvester Stallone NBA Superstar First Lady in "Rocky" Kevin Durant Michelle Obama Actor Kevin Bacon NBALegend Musician in "Footloose" Wilt Chamberlain Elvis Presley Musician Actor Musician Rihanna Hugh Jackman Snoop Dogg Talk Show Host Musician Musician Johnny Carson Kurt Cobain Justin Bieber 11 25. As a result ofmore than 80 years of exclusive use ofthe Converse Midsole Trademark; ubiquitous advertising, sales, and distribution of shoes bearing the Converse Midsole Trademark; the intentional copying and recognition of Converse's rights by others; and because of the vast unsolicited and salutary publicity of the Converse Midsole Trademark in connection with Converse, the Converse Midsole Trademark enjoys substantial secondary meaning as a trademark connected with Converse and is, and was at all times relevant to this investigation, famous among the general consuming public of the United States. e. The Converse Midsole Trademark Is Not Functional Other Than as a Valuable Trademark 26. The Converse Midsole Trademark relates to a distinctive design of Converse's own creation that long-ago acquired secondary meaning as a trademark and has since been registered on the United States Patent and Trademark Office ("USPTO") Principal Register. To the extent the design was described in functional terms early in its history, whatever functionality it possessed, if any, expired as footwear design, development, and manufacturing technology advanced over the years. 27. Because there today exist many non-infringing, non-dilutive midsole designs available for others' use, no competitor has any competitive need to use the Converse Midsole Trademark. 28. As described further below, the Converse Midsole Trademark is intentionally copied because of the goodwill it embodies as a trademark, not because of competitive need. f. Competitors Copy the Converse Midsole Trademark and Admit That It Is Distinctive, Famous, and Not Functional 29. Converse has served approximately 120 cease and desist letters at trade shows, and served additional letters and filed federal district court lawsuits, to protect consumer 12 perceptions and to police the Converse Midsole Trademark. These efforts are discussed further in Sections III.C and X below. Once confronted, violators often admit to the strength and protectability of the Converse Midsole Trademark. For example, in Converse Inc. v. Autonomie Project, Inc., 1:13-cv-12220 (D. Mass.), the defendant entered into a Consent Judgment and admitted that the trademarks at issue, which include the Converse Midsole Trademark, are "distinctive and non-functional," "well known, famous and associated with Converse, and that the goodwill appurtenant thereto belongs exclusively to Converse." Likewise, in Nike, Inc. and Converse Inc. v. Superstar International, Inc., et al., 12-5240 (C.D. Cal.), the defendants entered into two Consent Judgments and admitted that the trademarks at issue, which include the Converse Midsole Trademark, are "distinctive and non-functional," "well known, famous, and associated with Converse, and that the goodwill appurtenant thereto belongs exclusively to Converse." Copies of the Consent Judgments are attached as compilation Exhibit 11. 30. Violators to whom Converse sent cease and desist letters also agree that the Converse Midsole Trademark is distinct, famous, and non-functional. For example, Converse entered into settlement agreements in which violators admit that the midsole design of the Converse Midsole Trademark is well known, famous, and associated with Converse; non- functional; and valid and enforceable. 2. The Converse Midsole Trademark Is Federally Registered 31. In addition to distinctive, non-functional, and famous common law trademark rights in the Converse Midsole Trademark, Converse also owns United States Trademark Registration No. 4,398, 753 (the "'753 Registration") relating to the Converse Midsole Trademark. 13 32. Converse filed an application to register a textured toe bumper, a toe cap, and stripes on the midsole of a shoe, on August 6, 2012, based on Converse's prior, continuous use ofthis trademark The USPTO issued the '753 Registration to Converse on September 10, 2013. See Exhibit 1, Certified copy of the '753 Registration. A certified copy of the prosecution history of the '753 Registration is at Appendix 1. Figure 8 below depicts the Converse Midsole Trademark as it appears in the '753 Registration. FIGURE 8: Image from the '753 Registration 33. For all of the reasons set forth above, the trademark covered by the '753 Registration has acquired substantial secondary meaning and is famous. The '753 Registration is prima facie evidence ofthe validity ofthe Converse Midsole Trademark and of Converse's registration of the mark, of Converse's ownership of the mark, and of Converse's exclusive right to use the Converse Midsole Trademark in commerce in connection with footwear. Throughout this Complaint, reference to the "Converse Midsole Trademark" refers to both Converse's common law and registered trademark rights in its iconic midsole design. B. Converse's Iconic Outsole Design 34. Separate and distinct from its Converse Midsole Trademark, Converse also owns common law and federally registered trademark rights in the outsole design commonly used with Converse Shoes. With its launch in 191 7, All Star shoes included a distinct diamond pattern outsole. Since that time, substantially all Converse Shoes bearing the Converse Midsole 14 Trademark have also included the diamond pattern outsole design shown in Figure 9 below. To that end, all of the sales, distribution, and mass appeal described in connection with the Converse Midsole Trademark above apply equally to the diamond pattern outsole design, and Converse owns trademark rights in its distinctive and non-functional outsole trademark design (the "Converse Outsole Trademark"). FIGURE 9: Converse Shoes Featuring the Converse Midsole and Outsole Trademarks 35. As with the Converse Midsole Trademark, the Converse Outsole Trademark has been featured on approximately one billion pairs of Converse Shoes sold worldwide throughout the last century. Indeed, the design has been publicized in advertisements and promotions for nearly a century. Exemplary advertisements featuring the Converse Outsole Trademark are attached to this Complaint as Exhibit 12 and shown in Figure 10 below. 15 FIGURE 10: Exemplary Advertisements Featuring the Converse Outsole Trademark Allｙｕｾ＠ NHO UR ｃ ｾｭ ｬｮ＠ AI!IRL Circa 191 7 Converse Advertisement AJLS TA RS. All YOU ｎｅｊｾ ﾮ＠ Circa 1970 Converse Circa 1989 Converse Advertisement Advertisement 36. The Converse Outsole Trademark relates to a distinctive design of Converse's own creation that long-ago acquired secondary meaning as a trademark and has since been registered on the USPTO Principal Register. To the extent the design was described in functional terms early in its history, whatever functionality it possessed, if any, expired as footwear design, development, and manufacturing technology advanced over the years. 37. Because there today exist many non-infringing, non-dilutive outsole designs available for others' use, no competitor has any competitive need to use the Converse Outsole Trademark. 38. Similar to the Converse Midsole Trademark, the Converse Outsole Trademark is intentionally copied because of the goodwill it embodies as a trademark, not because of competitive need. Converse has served approximately 150 cease and desist letters at trade shows, and served additional letters and filed federal district court lawsuits, to protect consumer perceptions and to police the Converse Outsole Trademark. These efforts are discussed further in Sections III. C. and X below. Once confronted, violators often admit to the strength and protectability of the Converse Outsole Trademark. For example, Converse entered into 16 settlement agreements in which violators admit that the outsole design of the Converse Outsole Trademark is well known, famous, and associated with Converse, non-functional, and valid and enforceable. 1. The '960 Registration 39. Converse filed its trademark application for what is now U.S. Trademark Registration No. 1,588,960 (the '"960 Registration") on August 14, 1987, based on prior, continuous use of the trademark since at least 1920. The USPTO issued the '960 Registration to Converse on March 27, 1990. See Exhibit 3, Certified Copy ofthe '960 Registration. A certified copy of the prosecution history of the '960 Registration is at Appendix 3. The trademark covered by the '960 Registration has acquired substantial secondary meaning because consumers have come to uniquely associate it as a source identifier. Moreover, the '960 Registration is now incontestable, meaning it is conclusive evidence of the validity of the Converse Outsole Trademark and of Converse's registration ofthe mark, ofConverse's ownership of the mark, and of Converse's exclusive right to use the Converse Outsole Trademark in commerce in connection with footwear. 40. The design depicted in the '960 Registration is shown in Figure 11 below. FIGURE 11: Design Depicted in the '960 Registration 2. The '103 Registration 41. Converse filed its trademark application for what is now U.S. Trademark Registration No. 3,258,103 (the "' 103 Registration") on March 24, 2006, based on prior, 17 continuous use ofthe trademark since at least 1920. The USPTO issued the '103 Registration to Converse on July 3, 2007. See Exhibit 2, Certified copy ofthe '103 Registration. A certified copy of the prosecution history of the '103 Registration is at Appendix 2. The trademark covered by the '1 03 Registration has acquired substantial secondary meaning because consumers have come to uniquely associate it as a source identifier. Moreover, the '103 Registration is now incontestable, meaning it is conclusive evidence of the validity of the Converse Outsole Trademark and ofConverse's registration ofthe mark, of Converse's ownership of the mark, and of Converse's exclusive right to use the Converse Outsole Trademark in commerce in connection with footwear. 42. The design depicted in the '103 Registration is shown in Figure 12 below. FIGURE 12: Design Depicted in the '103 Registration ＨｾＺＺＺ［Ｚ＠ ｾｾｾｾ＠ ｾｾＭＬＺＺｾｺＺＺＺＺｾ］ＺＺｾＡＩ＠ 43. Throughout this Complaint, reference to the "Converse Outsole Trademark" refers to both Converse's common law and registered trademark rights in its iconic outsole design. C. No Licenses Under the Asserted Trademarks 44. Converse has not granted any licenses to the Asserted Trademarks in the United States in connection with footwear. III. COMPLAINANT CONVERSE 45. Converse is a Delaware corporation with its headquarters and principal place of business located at One High Street, North Andover, Massachusetts 01845. 18 A. History of Converse 46. Converse has a rich history. Founded in Malden, Massachusetts in 1908 as the Converse Rubber Shoe Company, Converse spent its early years making various rubber goods including boots and galoshes. 47. By the 1930s, Converse was a well-established footwear manufacturer, producing All Star high top shoes in several east coast factories. With the onset of World War II, Converse supported the War effort by sending newsletters and updates to its deployed employees, by aiding in rubber recycling efforts, and by manufacturing footwear for American soldiers. After the War, Converse enjoyed significant growth and became known as a performance footwear company through the 1960s and 1970s. It was one ofthe frrst footwear companies to leverage the athlete endorsement, partnering with National Basketball Association stars like Wilt Chamberlain and Julius Erving to promote its All Star shoes. The 1980s brought competition and by the late 1990s, Converse was losing business to companies like Nike, Inc. (''Nike"), adidas, and Reebok. Around the same time, Converse struggled to overcome financial burdens of its former parent companies, including one parent company that filed for bankruptcy in 1991. 48. In 2001, Converse filed for Chapter 11 bankruptcy. Fortunately for Converse, its consistent use of the Converse Midsole Trademark and Converse Outsole Trademark provided all it needed to pivot from an athletic footwear brand to leading a new lifestyle footwear market built around shoes bearing these iconic trademarks. 49. After emerging from bankruptcy, the enduring popularity of the Converse Midsole and Outsole Trademarks helped Converse post over $200 million in revenue in 2002. However, Converse continued to face fmancial troubles. In 2003, Nike acquired Converse for approximately $305 million. 19 50. After the acquisition, Converse largely operated independently of its parent company - a decision one commentator described as: a wise one considering how Chuck Taylor sneakers, lovingly called 'Chuck Taylors' by their fans, and the larger Converse brand, have appealed to both athletically minded and fashion• conscious shoe buyers, as well as many subcultures over the decades .... Asit Sharma, The Motley Fool (July 16, 2013), http://www.fool.com/investing/general/ 20 13/07/16/nike-sets-a-power-brand-free-and-reaps-billions.aspx, Exhibit 13. 51. Sales of shoes featuring the Converse Midsole and Outsole Trademarks accelerated. In fact, shoes bearing the Converse Midsole Trademark now account for a significant percentage of all Converse sales in the United States. B. Converse Brand Protection - Counterfeiters 52. Before 2000, Converse had a consistent practice of monitoring counterfeits and taking action to police its trademarks.2 However, leading up to its bankruptcy in 2001 and its acquisition in 2003, scant resources were available for trademark enforcement. 53. Around 2004/2005 Converse employed only a handful of people to assist in its anti-counterfeiting efforts because the number of counterfeits in the United States and foreign markets had been de minimis. Nevertheless, Converse proactively added an authentication mark in its labelling to help it distinguish counterfeit products from genuine Converse shoes. 54. Around 2007, Converse identified increasing numbers of counterfeit products entering its markets, primarily in Europe where counterfeiters leveraged favorable currency rates. In response, Converse implemented a more robust anti-counterfeiting program, including 2 A counterfeit is considered to be a product bearing identical copies of the Converse Midsole and Outsole Trademarks, along with Converse word marks and logos as they would ordinarily appear on Converse Shoes. In other words, a direct copy of a genuine Converse Shoe. See Section XIII, Glossary ofTerms. 20 incorporating additional overt and covert feature changes (or "tells") to identify counterfeit products. As part of these efforts, Converse also reallocated its resources and personnel responsibilities to assist in global anti-counterfeiting efforts. 55. Nonetheless, the number of counterfeits continued to increase through 2009. In Converse's fiscal year 2009, it seized almost 60,000 pairs of counterfeit Converse footwear products worldwide. In fiscal year 2010, Converse seized over 670,000 pairs of counterfeit Converse shoes worldwide. That number more than doubled in fiscal year 2011. Between fiscal years 2012 - 2014, Converse seized more than 2 million pairs of counterfeit Converse shoes worldwide. 56. Exemplary photographs from raids conducted with the assistance of Converse's local investigators and foreign authorities in recent years are shown in Figure 13 below. FIGURE 13: Exemplary Photographs of Raids and Seizures of Counterfeit Converse Shoes ｾＭＭｾＭＭＭＭＭＭＭＭＭＭＭＭＭＭｾ＠ 21 57. Today, Converse relies on a team oflawyers, manufacturing specialists, and quality control agents, in support of its brand protection efforts. Further to those efforts, Converse has incorporated dozens of"tells" in its shoes to help identify counterfeit products, which has cost Converse over $7 million. C. Converse Brand Protection -Knockoffs 58. Compared to counterfeits, Converse's problem with knockoffs is a recent development.3 Indeed, Converse has enjoyed substantially exclusive use of its trademarks in the United States over most of the past century. Knockoffs only began to appear domestically in approximately 2006 and, even then, only at de minimis levels. With Converse's limited enforcement resources focused on anti-counterfeiting efforts, it was not until around 2010 - after Converse celebrated its 100-year anniversary- that Converse perceived a rising tide of knockoffs in the United States. 59. In response to the progressive encroachment by knockoffs, Converse started serving cease and desist letters against designs violating the Converse Midsole and/or Outsole Trademarks. 60. In 2010, Converse began enforcing its trademark rights at the World Shoe Accessories ("WSA") trade show that is held twice a year in Las Vegas, Nevada. The WSA trade show has been described as the "the largest and most comprehensive footwear and related accessories show in the world. Its twice-yearly show[] pulls in more than 36,000+ participants and nearly 1,600 exhibitors." See WSA Show Website Capture, Internet Archive, http:/lweb.archive.org/web/20070129072629/http:/ www.wsashow.com/ feb2007/showfacts.asp, 3 Knockoffs are considered to be unauthorized products bearing close simulations of the Converse Midsole and/or Outsole Trademarks but - unlike counterfeits - lack other trademarks ordinarily found on Converse shoes. These products sometimes include words or logos that look similar to, but not identical to, Converse trademarks. See Section XIII, Glossary of Terms. 22 (Jan. 29, 2007 website capture from the Internet Archive, last visited Sept. 25, 2014), Exhibit 14. The WSA trade show provides a forum for suppliers (often, contract manufacturers) and buyers (often, shoe store retailers) to do business. The show is open only to the trade but attracts tens of thousands of participants. On information and belief, at each WSA trade show, foreign contract manufacturers take orders for tens of thousands of pairs of shoes bearing one or more of the Asserted Trademarks, many of which are destined for U.S. retailers. 61. Between August 2010 and February 2014, Converse spent hundreds of thousands of dollars sending investigators and lawyers to WSA trade shows to enforce its trademark rights. Over this four-year span, Converse sent cease and desist letters to WSA exhibitors including approximately 120 letters asserting common law and registered trademark rights in the Converse Midsole Trademark, and approximately 150 letters asserting common law and registered trademark rights in the Converse Outsole Trademark. 62. Converse has also spent well over a million dollars monitoring the domestic marketplace for knockoffs outside ofWSA trade shows. Between 2008 and August 2014, these efforts resulted in Converse sending 21 cease and desist letters enforcing one or more of the Asserted Trademarks. Converse also filed four lawsuits asserting the Converse Midsole and Outsole Trademarks. As a result of these efforts, Converse secured three consent judgments in its favor, one default judgment in its favor, four permanent injunctions in its favor, has entered into more than 20 settlement agreements that removed dozens of styles of infringing and dilutive designs from the marketplace, and has received payments totaling approximately $300,000 from infringers. 63. In total, between 2008 and today, Converse served more than 180 cease and desist letters enforcing one or more of the Asserted Trademarks. 23 64. Nevertheless, and despite Converse's efforts and successes policing its marks, the knockoff problem has continued to grow, and counterfeits are now found in the United States as well. Indeed, low barriers to entry to the manufacture of knockoff shoes, the existence of well• established U.S. demand and channels of distribution for knockoffs, and the ease with which manufacturers, distributors, and sellers of knockoff and counterfeit Converse shoes can change names, locations, suppliers, packaging, etc., makes it a nearly impossible task to identify the origin of all imported knockoffs and to combat them one by one. In other words, the ongoing importation of infringing knockoffs, despite aggressive Converse enforcement efforts, demonstrates that circumvention of a limited exclusion order is almost certain, and there is a well-established pattern of violating the Asserted Trademarks. Because the scope of the problem today can only be addressed through a nationwide and comprehensive remedy, Converse respectfully requests that the investigation be initiated against the following Respondents. IV. PROPOSED RESPONDENTS 65. On information and belief, Respondents include manufacturers, distributors, and retailers that import, sell for importation, and/or sell within the United States after importation certain footwear products that violate Converse's rights in one or more of the Asserted Trademarks, including Converse's common law and federally registered trademark rights relating thereto. 66. Table 1 below summarizes the Asserted Trademarks violated by each of Respondents' Accused Products, each of which is depicted in Figure 14 below. A more detailed description of each Respondent and its Accused Products follows. 24 TABLE 1: Asserted Trademarks Violated by Respondents' Accused Products ＠ｾ＠ｾ＠ .. .. ｾ＠ .. ｾ＠ .. ｾ＠ .. e'!S e'!S e'!S e'!S e'!S rl.l sｾ＠ ...... s S.:; s s ｾ＠ ｾＭ］＠ ＢＰｾ＠ = "0 ｾ＠ ｾ＠ ｾ＠ "0 0 e'!S .... "0 =0 "0 =0 ｅｾ＠ ...... e'!S ...... e'!S ...... e'!S ...... ｾ＠ ｾ＠ ｾ＠ E ｾ＠ Ｍｾ＠ ｾ＠ ｾ＠ E E-- E ｾ＠ ...... ｾ＠ ｾ＠ ..2:l e'!S ..2:l e'!S ...... ｾｾ＠ - 0 ....rl.l - 0 ....rl.l - 0 ....rl.l Respondents' Accused Products rl.l ｾ＠ ｾｾ＠ rl.l ｾ＠ rl.l ｾ＠ "0 ｾ＠ ...."0 0 ｾ＠ = ...... = 0= ］ｾ＠ ］ｾ＠ ｾ＠ s ｾｾ＠ 0 s 0= ｯｾ＠ ｾ＠ ｾｉｉＩ＠ ｾ｜ｃＩ＠ ｾ］＠ s rl.)t'-- ｾ＠ s ri.)O'\ ri.).....C ｾ＠ 0 .. ｾ＠ .. 0 ｾ＠ ｾ＠ .. ｾ＠ｾ＠ .. ｾ＠ ｾｵ＠ > ｾｵ＠ > > 0 0 0 u=0 0 u = u= u = u = Skechers X X Bobs Utopia Skyline X X Bobs Utopia X X Twinkle Toes Shuffles-Streetfeet X X Twinkle Toes Wild Spark X X HyDee HyTop Gimme Starry Skies X X Daddy'$ Money Gimme Lone Star X X Daddy'$ Money Gimme Mucho Dinero X X Wal-Mart: Faded Glory Stinson Oxford X X A-List d/b/a Kitson X X See Brian Lichtenberg Homies High Top X X See Dioniso Black Vintage Swarovski Converse X X Aldo: Sprenkle X X Brian Lichtenberg: Homies High Tops X X Cmerit d/b/a Gotta Flurt: Twisty Zoo X X Dioniso: Black Vintage Swarovski Converse X X Edamame: Canvas Low-Top X X Esquire: Shoe X X X X X FILA: Original Canvas X X Fortune Dynamic: SODA-SPY X X Gina Group: Chatties Zebra Hi-Top X X H & M: High Tops X X Highline United d/b/a ASH: Vincent X X Hitch dlb/ a Skeanie: Canvas Gym Boot X X X X X 25 Iconix Brand Group d/b/a Ed Hardy: Men's Dakota X X Kmart: Joe Boxer X X Mamiye Imports d/b/a Lilly ofNew York: Canvas Old School X X X X X Nowhere Co. d/b/a Bape: ABC Camo ApeSta X X OPPO: Neo X X Orange Clubwear d/b/a Demonia Deviant: Deviant 101 X X Ositos: Men's Low-Top Canvas X X PW: Two-Tone Shoe Canvas X X X X X Ralph Lauren: Ranell X X Foreversun: Blue X X X X X Shoe Shox: Navy Sneaker X X X X X Tory Burch: Benjamin X X Zulily X X X X X See Gina Group: Chatties Zebra Hi- Top X X See Mamiye Imports d/b/a/ Lilly of New York: Canvas Old School X X X X X See Ositos: Men's Low-Top Canvas X X See PW: Two-Tone Shoe Canvas X X X X X See Shoe Shox: Navy Sneaker X X X X X Fuiian Xinya X X See FILA Original Canvas X X Zhejiang Ouhai X X See Aldo Sprenkle X X SeeOPPONeo X X Wenzhou Cereals X X See Ositos Men's Low-Top X X 26 27 A. Skechers U.S.A., Inc. 67. On information and belief, Respondent Skechers U.S.A., Inc. ("Skechers") is a California corporation with its principal place of business located at 228 Manhattan Beach Boulevard, Manhattan Beach, CA 90266. See Contact Us, Skechers, http://www.skechers.com/info/contact-us (last visited Sept. 1, 2014), Exhibit 15; see also California Secretary of State Business Entity Detail for Skechers U.S.A., Inc., Exhibit 16. 1. Skechers' Background 68. A 2001 Forbes. com article described Skechers as "a company that uses [its founder's] skill as a practiced knockoff artist to full effect ... [b ]y the time middle America catches on to a new style ... Skechers has a lower-priced lookalike in stores." See Melanie Wells, Sole Survivors, Forbes, Aug. 6, 2001, at 62-68, available at http://www.forbes.com/forbes/200110806/062.html, Exhibit 17. 69. Since 2001, Skechers' business practices have continued to garner negative publicity. In 2010, Skechers introduced a line of shoes called "BOBS." On information and belief, Skechers' first BOBS shoe models were marketed and designed to resemble a pre-existing competitor's line of shoes called ''TOMS." One commentator observed that, "[j]ust like TOMS, when you buy a pair of BOBS, Skechers would donate another pair to a child in need. Even the shoes were the same. And their name had a similar short, familiar feel. In doing so, [Skechers] set themselves up for online ridicule, but also drew a powerful distinction between those that do good because ofthe meaning behind it and those that do it simply for marketing purposes .... [B]y mirroring the TOM's concept so blatantly, Skechers not only showed a lack of creativity and originality, but they left themselves wide open to accusations of disingenuous social concern." See Simon Mainwaring, Toms vs. Bobs: How Skechers Shot Themselves in the Foot, 28 Fast Company (Oct. 21, 2010), http://www.fastcompany.com/1696887/toms-vs-bobs-how• skechers-shot-themselves-foot, Exhibit 18. 70. Notwithstanding the harsh criticism, in 2013, Skechers expanded its BOBS shoe line by introducing BOBS shoes that, on information and belief, intentionally copy the Converse Midsole Trademark. Examples of Accused Products from Skechers' BOBS shoe line are shown in Figure 15 below. FIGURE 15: Exemplary Shoes From Skechers' BOBS Shoe Line 71. On information and belief, Skechers' early business model targeted adult men. According to Forbes.com, Skechers was careful to avoid marketing to teenage suburban girls in the United States because "[n]ot only are the girls are [sic] a fickle bunch, their enthusiasm makes it harder to appeal to urban street kids and to [ ] adult men." Exhibit 17. 72. Nevertheless, on information and belief, by around 2009, Skechers squarely targeted young, suburban girls with a line of shoes sold under the brand name, "Twinkle Toes." Skechers marketed the shoes in connection with cartoon characters and encouragement for girls to "Discover Your Inner Sparkle!" (see Figure 16 below). 29 FIGURE 16: Exemplary "Twinkle Toes" Marketing 73. On information and belief, around 2010, Skechers intentionally copied the Converse Midsole Trademark, applying it to Skechers' Twinkle Toes shoes. On information and belief, over the past several years, Skechers has also intentionally varied the branding present on its Twinkle Toes shoes bearing the Converse Midsole Trademark to confuse consumers as to the source, affiliation, or sponsorship of those shoes, and/or to intentionally dilute the Converse Midsole Trademark with a view toward futther free-riding on the Converse brand. Exemplary Accused Products showing 'Twinkle Toes" branded and unbranded shoes are shown in Figure 17 below. FIGURE 17: Exemplary Shoes From Skechers' "Twinkle Toes" Shoe Line 74. In addition to young girls, on information and belief, Skechers now also intentionally targets teen and pre-teen girls using the Converse Midsole Trademark. To that end, around late 2012 or early 2013, Skechers introduced a line of shoes called "Daddy'$ Money" bearing a copy of the Converse Midsole Trademark. Skechers' promotions for Daddy'$ Money 30 shoes using scantily clad young women drew criticism: "Skechers, the shoe company that last year was forced to pay millions of dollars for making 'unfounded claims' about its line of shoes that promised to tone, is under fire again for its marketing of sneakers to kids. . . . The company is being targeted by mom bloggers and parenting experts for marketing its high-heeled wedge sneaker line, called 'Daddy'$ Money,' to pre-teen and teenage girls .... 'It's totally sexist'." See Skechers Under Fire for 'Daddy'$ Money' Sneakers, ABC News (Feb. 27, 2013), http://abcnews.go.com/blogs/ business/20 13/02/skechers-under-fire-for-daddys-money-sneakers/ (last visited Aug. 30, 2014), Compilation Exhibit 19 at 1 (annotated); see also Tiffany Hsu, Moms stompy on Skechers over Daddy'$ Money sneakers line for teens, Los Angeles Times (Feb. 28, 20 13), http:/ /articles.latimes.com/20 13/feb/28/business/la-fi- mo-skechers-daddys• money-sneakers-20130228, Compilation Exhibit 19 at 4; Daddy'$ Money By Skechers: Shoes for Teen Girls Cause Controversy, Huffmgton Post (Feb. 27, 2013), http :I wwwl .huffmgtonpost. com/20 13 /02/2 7I daddy-money-by-skechers• _n_2774226.html?view=print&comm_ref=false, Compilation Exhibit 19 at 6. Exemplary Accused Products from Skechers' Daddy'$ Money shoe line are shown in Figure 18 below. FIGURE 18: Exemplary Shoes From Skechers' "Daddy'$ Money" Shoe Line 75. On information and belief, Skechers intended to create associations with Converse when it copied the Converse Midsole Trademark. Indeed, Skechers' Accused Products 31 have given rise to unwanted and unauthorized associations with Converse. At least one commentator observed that "Daddy'$ Money look like knockoffs of the classic 'Chuck Taylor' (Converse) canvas high-top design, hastily cobbled together by someone that watched a couple ofLMFAO music videos and thought it was time to make a few shoes .... Skechers has a 'sketchy' history oflate (those shady 'Shape-Up' shoes that my wife spent over $100 on), and to think that I actually used to like their men's shoes quite a bit." James Zahn, Parents outraged by Skechers' Daddy's Money? I'll tell you what's truly offensive, The Rock Father Magazine (Feb. 28, 2013), http://www.therockfather.com/blog/item/964-parents-outraged-by-skechers-daddys• money-ill-tell-you-whats-truly-offensive, Compilation Exhibit 19 at 8 (annotated). 2. Skechers' Accused Products 76. Skechers' Accused Products include at least its "Bobs Utopia," "Bobs Utopia Skyline," ''Twinkle Toes Shuffles-Streetfeet," "Twinkle Toes Wild Spark," "Daddy'$ Money Gimme Mucho Dinero," "Daddy'$ Money Gimme Lone Star," and "HyDee HyTop Gimme Starry Skies" footwear products and all colorable imitations thereof Representative images of Skechers' Accused Products are show in Exhibit 20. 77. On information and belief, Skechers has promoted and sold additional shoe models bearing the Converse Midsole Trademark under various names and style descriptions. On information and belief, Skechers varies the identity, duration, quantity, and geographic distribution of its shoe models to frustrate the regular trademark policing efforts of senior trademark owners like Converse. 78. On information and belief, in addition to the Accused Products, Skechers promotes and sells a wide variety of shoe designs that do not include the designs of its Accused 32 Products and that do not violate the Asserted Trademarks. See Men's Casual Shoes, Skechers, http://www.skechers.com/men/styles/casual-shoes (last visited Sept. 29, 2014), Exhibit 21. 3. Skechers' Unfair Acts, Infringement, and Dilution of the Converse Midsole Trademark 79. On information and belief, Skechers manufactures, imports into the United States, promotes, distributes, and/or sells after importation in the United States Skechers' Accused Products shown below that infringe and/or are likely to dilute the Converse Midsole Trademark. a. Converse Owned Protectable and Famous Trademark Rights Before Skechers Promoted and Sold Accused Products 80. As a result of Converse's near century of substantially exclusive use of the Asserted Trademarks, substantial promotion and sales of products bearing the Asserted Trademarks, widespread unsolicited publicity of the Asserted Trademarks, and attempts to copy the Asserted Trademarks by others, as set forth above, Converse owned highly distinctive, well- recognized, and famous trademark rights in the Asserted Trademarks before Skechers promoted and sold Accused Products. 81. The Asserted Trademark relevant to Skechers' violations is also the subject of a duly issued United States Trademark Registration. b. Skechers' Accused Products Are Virtually Identical to the Converse Midsole Trademark 82. As shown in Figure 19 below, Skechers' Accused Products bear designs that are nearly identical to the Converse Midsole Trademark. 33 FIGURE 19: Representative Images of Skechers' Accused Products and the Converse Asserted Trademark Representative Accused Product Converse Asserted Trademark Converse Shoe Bobs Utopia Twinkle Toes Shuffles• Streetfeet 34 Representative Converse Accused Product Converse Asserted Trademark Shoe Twinkle Toes -Wild Spark Daddy'$ Money Gimme Lone Star Daddy'$ Money Gimme Mucho Dinero 35 Representative Converse Accused Product Converse Asserted Trademark Shoe HyDee HyTop Gimme Starry Skies 83 . On information and belief, Skechers has used the Converse Midsole Trademark on numerous other shoes of the same model-type as the Accused Products shown in Figure 18 above. For example, Figure 20 below depicts additional shoes in Skechers' Daddy'$ Money line as compared to Converse Shoes. FIGURE 20: Skechers' Daddy'$ Money Shoes and Representative Converse Shoes Skechers' Daddy'$ Money Representative Converse Shoes Shoe 36 c. Skechers Intended to Copy the Converse Midsole Trademark and to Infringe and Dilute the Converse Midsole Trademark 84. Skechers' intent to create associations with Converse and to free ride on Converse's goodwill is evident in the close similarities between Skechers' Accused Products on the one hand, and the Converse Midsole Trademark on the other hand. On information and belief, the overwhelming similarities are due to Skechers' intentional copying. 85. Additionally, searches for the terms "Chuck Taylor" and "Chucks" on Skechers' website result in promotions for the Accused Products, including "Bobs" and "Twinkle Toes" shoes. See Exhibit 22 (web printout of search results from Skechers' website). d. Skechers Promotes and Sells Accused Products in Competition With Converse's Promotion and Sales of Products Bearing the Asserted Trademarks 86. On information and belief, Skechers has promoted and sold its Accused Products at retailers such as Nordstrom and online at Zappos.com and Shoebuy.com. On information and belief, Skechers has also sold its Accused Products through its own and other retail stores and Internet sites. 87. On information and belief, Skechers' Accused Products have been promoted and sold at prices ranging from approximately $25 to $63. See Decl. of Mary C. ("Kate") Schrader, Exhibit 23. 88. On information and belief, Skechers promotes and sells its Accused Products as casual or lifestyle shoe designs primarily for females from very young to middle age. e. Relevant Consumers Are Susceptible to Confusion and Dilutive Associations Caused by Skechers' Accused Products 89. Consumers of shoes like those at issue here are not likely to exercise great care in resolving likely confusion in their initial product interest, at the point of purchase, or in post-sale exposure. Even more sophisticated consumers are likely to experience cognitive dissonance 37 regarding the source, affiliation, sponsorship, or association ofSkechers' Accused Products when confronted with promotions and sales of Skechers' Accused Products. 90. In the post-sale context, where actual or potential consumers of shoes may only see Skechers' Accused Products on someone' s feet in passing, consumers are especially likely to mistake the source, affiliation, or sponsorship of Skechers' Accused Products with Converse and/or the Asserted Trademarks, or to associate the Accused Products with Converse and/or the Asserted Trademarks. f. Skechers' Accused Products Are Likely to Cause Confusion and Dilutive Associations 91. Due to the overwhelming similarities between Skechers' Accused Products and the Converse Midsole Trademark, and for the reasons set forth above, there is (a) a likelihood of confusion between Skechers or its Accused Products, and Converse or the Converse Midsole Trademark, and/or (b) a likelihood of dilution. 92. As demonstrated above, unauthorized, unwanted associations already establish that people view Skechers' Accused Products as knockoffs of Converse Shoes. B. Wal-Mart Stores, Inc. 93. On information and belief, Respondent Wal-Mart Stores, Inc. ("Walmart") is a Delaware corporation with its principal place of business located at 702 S.W. 8th Street, Bentonville, AR 72716. See Our Story, Walmart, http://corporate.walmart.com/our-story/, (last visited July 27, 2014), Exhibit 24; see also Arkansas Secretary of State Corporate Records for Walmart, Exhibit 25. 1. Walmart's Background 94. Walmart opened its doors in 1962 in Rogers, Arkansas, and today has more than 11,000 stores. See id. Walmart's business model centers on offering customers "everyday low 38 prices," which at least one commentator has attributed to Walmart's "policy for suppliers [that] ... the price Wal-Mart will pay, and will charge shoppers, must drop year after year." Charles Fishman The Wal-Mart You Don't Know, Fast Company (Dec. 1, 2003), http://www.fastcompany.com/47593/wal-mart-you-dont-know, Exhibit 26. 95. One commentator has commented on Walmart's low prices in discussing its Chuck Taylor "clones," observing that they will probably last only "a couple of months" and "in the end [Walmart's Chuck Taylor clones] are just what the price says about them: $12 shoes." Ryan, Wal-Mart 's $12 chuck taylor clones that everyone is talking about, Oil & Wool (Mar. 9, 2012), http://www.oilandwool.com/2012/03/09/wal-marts-12-chuck-taylor-clones-that-everyone- is-talking-about/, Exhibit 27. 96. Likewise, in commenting on Walmart's shoes, consumers have observed: • "All good on the knockoff front-- people compliment me on my 'Chucks'" • "These shoes look and feeljust like Chuck Taylor's ... but without the Converse price tag." • "They look like the real Converse sneakers." • "people can't tell there not chucks" [sic] • ''Not a bad replica .. .Definitely not the quality ofConverse, but for the price, it's not bad at all." • "I've seen Converse shoes for up to 4x as much as these cost but these could easily pass the same, even though they're way less expensive!" Customer Reviews, Walmart, http:/!reviews.walmart.com/1336/16607717/faded-glory-mens- stinson-oxford-lace-up-sneakers-reviews/reviews.htm (last visited Aug. 29, 2014), Compilation Exhibit 28 at 1-4, 6 (annotated) (emphasis added); Frugal Male Fashion, Reddit, http://www.reddit.com/r/frugalmalefashion/comments/qn1 fi/12 _chuck_taylor_ knockoff_review _ 39 1297_with_shipping/ (last visited Sept. 25, 2014), Compilation Exhibit 28 at 11 (annotated) (emphasis added). 2. Walmart's Accused Products 97. Walmart's Accused Products include at least its "Faded Glory Stinson Oxford" footwear products and all colorable imitations thereof Representative images ofWalmart's Accused Products are at Exhibit 29. Walmart promotes and sells its "Faded Glory Stinson Oxford" as a low-cost work shoe. 98. On information and belief, Walmart has promoted and sold additional shoe models bearing the Converse Midsole Trademark under various names and style descriptions. 99. On information and belief, in addition to the Accused Products, Walmart 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. See Walmart, www.walmart.com/cp/Shoes/1045804 (last visited Aug. 28, 2014), Exhibit 30. 3. Walmart's Unfair Acts, Infringement, and Dilution of the Converse Midsole Trademark 100. On information and belief, Walmart imports into the United States, promotes, distributes, and/or sells after importation in the United States its Accused Products shown and described below that infringe and/or are likely to dilute one or more of the Asserted Trademarks. a. Converse Owned Protectable and Famous Trademark Rights Before Walmart Promoted and Sold Accused Products 101. As a result of Converse's near century of substantially exclusive use of the Asserted Trademarks, substantial promotion and sales of products bearing the Asserted Trademarks, widespread unsolicited publicity of the Asserted Trademarks, and attempts to copy the Asserted Trademarks by others, as set forth above, Converse owned highly distinctive, well- 40 recognized, and famous trademark rights in the Asserted Trademarks before Wahnart promoted and sold Accused Products. 102. The Asserted Trademark relevant to Wahnart's violations is also the subject of a duly issued United States Trademark Registration. b. Walmart's Accused Products Are Virtually Identical to the Converse Midsole Trademark 103. As shown in Figure 21 below, Wahnart's Accused Products bear designs that are nearly identical to the Converse Midsole Trademark. FIGURE 21: Representative Images ofWalmart's Accused Products and the Converse Asserted Trademark Representative Converse Accused Product Converse Asserted Trademark Shoe Faded Glory Stinson Oxford c. Walmart Intended to Copy the Converse Midsole Trademark and to Infringe and Dilute the Converse Midsole Trademark 104. Walmart's intent to create associations with Converse and to free ride on Converse's goodwill is evident in the close similarities between Walmart's Accused Products on the one hand, and the Converse Midsole Trademark on the other hand. On information and belief, the overwhelming similarities are due to Wahnart's intentional copying. 41 105. Additionally, searches for the terms "Converse" and "All Star" on Walmart's website results in promotions for the Accused Products, including "Faded Glory" shoes. See Exhibit 31 at 2, 3, 7 (web printout of search results from Walmart's website). d. Walmart Promotes and Sells Its Accused Products in Competition With Converse's Promotion and Sales of Products Bearing the Asserted Trademarks 106. On information and belief, in addition to the Accused Products, Walmart sells its Accused Products at its retail stores in the United States and on the Internet. See Faded-Glory- Men's Stinson High Top Sneakers, Walmart, http://www.walmart.com/ip/Faded-Glory-Men-s- Stinson-Canvas-Lace-Up-Sneakers/14179109 (last visited Aug. 28, 2014), Exhibit 32. 107. On information and belief, Walmart's Accused Products have sold at approximately $13. See Exhibit 23. 108. On information and belief, Walmart promotes and sells its Accused Products primarily to men. e. Relevant Consumers Are Susceptible to Confusion and Dilutive Associations Caused by Walmart's Accused Products 109. Consumers of shoes like those at issue here are not likely to exercise great care in resolving likely confusion in their initial product interest, at the point of purchase, or in post-sale exposure. Even more sophisticated consumers are likely to experience cognitive dissonance regarding the source, affiliation, sponsorship, or association ofWalmart's Accused Products when confronted with promotions and sales ofWalmart's Accused Products. 110. In the post-sale context, where actual or potential consumers of shoes may only see Walmart's Accused Products on someone's feet in passing, consumers are especially likely to mistake the source, affiliation, or sponsorship ofWalmart's Accused Products with Converse 42 and/or the Asserted Trademarks, or to associate the Accused Products with Converse and/or the Asserted Trademarks. f. Walmart's Accused Products Are Likely to Cause Confusion and Dilution 111. Due to the overwhelming similarities between Walmart's Accused Products and the Converse Midsole Trademark, and for the reasons set forth above, there is (a) a likelihood of confusion between Walmart or its Accused Products, and Converse or the Converse Midsole Trademark, and/or (b) a likelihood of dilution. 112. On information and belief, Walmart intended to create associations with Converse when it copied the Converse Midsole Trademark. Indeed, Walmart's Accused Products have given rise to unwanted and unauthorized associations with Converse. See, e.g., Exhibit 27; Exhibit 28 at 2, 9 (annotated). C. A-List, Inc., d/b/a Kitson 113. On information and belief, Respondent A-List, Inc., d/b/a Kitson ("Kitson"), is a California corporation with its principal place ofbusiness located at 115 S. Robertson Boulevard, Los Angeles, CA 90048. See Locations, Kitson, http://www.shopkitson.com/index.php?page=locations (last visited Aug. 30, 2014), Exhibit 33; see also California Secretary of State Business Entity Detail for A-List, Inc., Exhibit 34. 1. Kitson's Background 114. Kitson stores are boutique specialty stores, which The Wall Street Journal described as "eclectic, up-to-the-minute emporiums of trendy fashion, accessories and novelty items." Christina Binkley, How Stores Lead You to Spend, The Wall Street Journal (Nov. 30, 201 0), http://online. wsj.com/news/articles/SB 10001424052748704679204575646722 43 998802434, Exhibit 35. Kitson "makes money from fashionistas seeking Elizabeth & James tops and folks who want to shop at the place where Britney Spears bought baby clothes." Id. 115. On information and belief, Kitson first started selling shoes like those accused of infringement in this action in limited quantities and geographic areas around 2006. On information and belief, Kitson entered the shoe business at the encouragement and with the design and/or manufacturing support of Skechers. 2. Kitson's Accused Products 116. Kitson's Accused Products include at least its "Homies High Tops" footwear products by Brian Lichtenberg and its "Black Vintage Swarovski Converse" footwear products by Dioniso, as well as colorable imitations thereof Representative images of Kitson's Accused Products are attached as Exhibit 36. 117. On information and belief, Kitson has promoted and sold additional shoe models bearing the Converse Midsole Trademark under various names and style descriptions, but in small quantities with limited distribution. 118. On information and belief, in addition to the Accused Products, Kitson 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. See Women's Shoes, Kitson, http://www.shopkitson.com/?page= browse&subcategoryiD=22 (last visited Aug. 29, 2014), Exhibit 37 (excerpt from website). 3. Kitson's Unfair Acts, Infringement, and Dilution of the Converse Midsole Trademark 119. On information and belief, Kitson manufactures, imports into the United States, promotes, distributes, and/or sells after importation in the United States Kitson's Accused Products shown below that infringe and/or are likely to dilute the Converse Midsole Trademark. 44 a. Converse Owned Protectable and Famous Trademark Rights Before Kitson Promoted and Sold Accused Products 120. As a result of Converse's near century of substantially exclusive use ofthe Asserted Trademarks, substantial promotion and sales of products bearing the Asserted Trademarks, widespread unsolicited publicity of the Asserted Trademarks, and attempts to copy the Asserted Trademarks by others, Converse owned highly distinctive, well-recognized, and famous trademark rights in the Asserted Trademarks before Kitson promoted and sold Accused Products. 121. The Asserted Trademark relevant to Kitson's violations is also the subject of a duly issued United States Trademark Registration. b. Kitson's Accused Products Are Virtually Identical to the Converse Midsole Trademark 122. As shown in Figure 22 below, Kitson's Accused Products bear designs that are nearly identical to the Converse Midsole Trademark. 45 FIGURE 22: Representative Images of Kitson's Accused Products and the Converse Asserted Trademark Representative Converse Accused Product Converse Asserted Trademark Shoe Brian Lichtenberg: Homies High To s Dioniso: Black Vintage Swarovski Converse c. Kitson Intended to Copy the Converse Midsole Trademark and to Infringe and Dilute the Converse Midsole Trademark 123. Kitson's intent to create associations with Converse and to :fi:ee ride on Converse's goodwill is evident in the close similarities between Kitson's Accused Products on the one hand, and the Converse Midsole Trademark on the other hand. On information and belief, the overwhelming similarities are due to Kitson's intentional copying. 124. Additionally, a search of the term "Converse" on Kitson's website results in promotions for the Accused Products, including Dioniso's "Black Vintage Swarovski Converse" shoe. See Exhibit 38 (web printout of search results from Kitson's website). 46 d. Kitson Promotes and Sells Accused Products in Competition With Converse's Promotion and Sales of Products Bearing the Asserted Trademarks 125. On information and belief, Kitson promotes and sells its Accused Products through its own retail stores in the United States and the Internet. See, e.g., Search Results for Dioniso, Kitson, http://www. shopkitson.com/index. php ?page= search& keywords=dioniso&x=- 1427&y=-93 (last visited Jul. 27, 2014), Exhibit 39; see also Exhibits 23; Decl. ofKelly Greenberg, Exhibit 40. 126. On information and belief, Kitson's Accused Products by Dioniso have sold at approximately $1,295, and its Accused Products by Brian Lichtenberg have sold at approximately $375. See Exhibit 23; Exhibit 40. Kitson's Accused Products by Brian Lichtenberg have also sold as low as $28. See Kitson, http://www.shopkitson.com/index.php?page=product&id=23237 (last visited Oct. 2, 2014), Exhibit 41. 127. On information and belief, Kitson promotes and sells its Accused Products as casual or lifestyle shoe designs primarily to adult men and women. e. Relevant Consumers Are Susceptible to Confusion and Dilutive Associations Caused by Kitson's Accused Products 128. Consumers of shoes like those at issue here are not likely to exercise great care in resolving likely confusion in their initial product interest, at the point of purchase, or in post-sale exposure. Even more sophisticated consumers are likely to experience cognitive dissonance regarding the source, affiliation, sponsorship, or association ofKitson's Accused Products when confronted with promotions and sales of Kitson's Accused Products. 129. In the post-sale context, where actual or potential consumers of shoes may only see Kitson's Accused Products on someone' s feet in passing, consumers are especially likely to 47 mistake the source, affiliation, or sponsorship of Kitson's Accused Products with Converse and/or the Asserted Trademarks, or to associate the Accused Products with Converse and/or the Asserted Trademarks. f. Kitson's Accused Products Are Likely to Cause Confusion and Dilutive Associations 130. Due to the overwhelming similarities between Kitson's Accused Products and the Converse Midsole Trademark, and for the reasons set forth above, there is (a) a likelihood of confusion between Kitson or its Accused Products, and Converse or the Converse Midsole Trademark, and/or (b) a likelihood of dilution. D. Aldo Group 131. On information and belief, Respondent Aldo Group ("Aldo ") is a Canadian corporation with its principal place ofbusiness located at 2300 Emile-Belanger, Montreal, Quebec H4R 3J4, Canada. See Contact Us, Also Shoes, http://www.aldoshoes.com/us/contact (last visited Jul. 27, 2014), Exhibit 42. 1. Aldo's Background 132. Founded in 1972 as a footwear concession in Montreal, Aldo now has over 1,000 retail stores. See Aldo History, Aldo Shoes, http://www.aldoshoes.com/us/history (last visited Aug. 29, 2014), Exhibit 43. According to Toronto's The Globe and Mail newspaper, Aldo's business model centers on spotting "fashion hits" and getting shoes into stores faster than the rest ofthe industry. ''Nobody is quicker [than Aldo] at adjusting shoe styles .... [President Aldo Bensadoun] 's team races to stay on top of the latest trends by chasing down street fashions and runway hits in fashion capitals. Once it spots a workable idea, Aldo Group requires a mere five to 12 weeks to get shoes to stores, compared with an industry average of 17 weeks." Marina Strauss, Aldo's Global Footprint, The Globe and Mail (Aug. 23, 2012), 48 http://www.theglobeandmail.com/report-on-business/small-business/sb-growth/going- global/aldos-global-footprint/article601117/?page=all, Exhibit 44. 2. Aldo's Accused Products 133. Aldo's Accused Products include at least its "Sprenkle" footwear products and all colorable imitations thereof Representative images of Aldo's Accused Products are attached as Exhibit 45. 134. On information and belief, Aldo has promoted and sold additional shoe models bearing the Converse Midsole Trademark under various names and style descriptions. 135. On information and belief, in addition to the Accused Products, Aldo 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. See Shoes, Aldo Shoes, www.aldoshoes.com/Shoes (last visited Aug. 29, 2014), Exhibit 46. 3. Aldo's Unfair Acts, Infringement, and Dilution of the Converse Midsole Trademark 136. On information and belief, Aldo manufactures, imports into the United States, promotes, distributes, and/or sells after importation in the United States Aldo's Accused Products shown below that infringe and/or are likely to dilute the Converse Midsole Trademark. a. Converse Owned Protectable and Famous Trademark Rights Before Aldo Promoted and Sold Accused Products 137. As a result of Converse's near century of substantially exclusive use of the Asserted Trademarks, substantial promotion and sales of products bearing the Asserted Trademarks, widespread unsolicited publicity, and attempts to copy the Asserted Trademarks by others, as set forth above, Converse owned highly distinctive, well-recognized, and famous trademark rights in the Asserted Trademarks before Aldo promoted and sold Accused Products. 49 138. The Asserted Trademark relevant to Aldo's violations is also the subject of a duly issued United States Trademark Registration. b. Aldo's Accused Products Are Virtually Identical to the Converse Midsole Trademark 139. As shown in Figure 23 below, Aldo's Accused Products bear designs that are nearly identical to the Converse Midsole Trademark. FIGURE 23: Representative Images of Aldo's Accused Products and the Converse Asserted Trademark Representative Converse Accused Product Converse Asserted Trademark Shoe Sprenkle c. Aldo Intended to Copy the Converse Midsole Trademark and to Infringe and Dilute the Converse Midsole Trademark 140. Aldo's intent to create associations with Converse and to free ride on Converse's goodwill is evident in the close similarities between Aldo' s Accused Products on the one hand, and the Converse Midsole Trademark on the other hand. On information and belief, the overwhelming similarities are due to Aldo's intentional copying. d. Aldo Promotes and Sells Accused Products in Competition With Converse's Promotion and Sales of Products Bearing the Asserted Trademarks 141. On information and belief, Aldo has promoted and sold its Accused Products through its own retail stores in the United States and the Internet. See The Give Me Guide, Aldo 50 Shoes, http://www. aldoshoes. com/ca-eng/pages/ storeSection/thegivemeguide#2 (last visited Sept. 1, 2014), Compilation Exhibit 47 at 1; see also Sprenkle, Aldo Shoes, http://www.aldoshoes.com/us/men/shoes/sneakers/97818924-sprenkle/ (last visited Sept. 1, 2014, Compilation Exhibit 47 at 3. 142. On information and belief, Aldo's Accused Products have been promoted and sold at approximately $55. See Decl. Bill Vincent, Exhibit 48. 143. On information and belief, Aldo promotes and sells its Accused Products as casual or lifestyle shoe designs primarily to adult men and women. e. Relevant Consumers Are Susceptible to Confusion and Dilutive Associations Caused by Aldo's Accused Products 144. Consumers of shoes like those at issue here are not likely to exercise great care in resolving likely confusion in their initial product interest, at the point of purchase, or in post-sale exposure. Even more sophisticated consumers are likely to experience cognitive dissonance regarding the source, affiliation, sponsorship, or association of Aldo's Accused Products when confronted with promotions and sales of Aldo 's Accused Products. 145. In the post-sale context, where actual or potential consumers of shoes may only see Aldo's Accused Products on someone's feet in passing, consumers are especially likely to mistake the source, affiliation, or sponsorship of Aldo's Accused Products with Converse and/or the Asserted Trademarks, or to associate the Accused Products with Converse and/or the Asserted Trademarks. f. Aldo's Accused Products Are Likely to Cause Confusion and Dilutive Associations 146. Due to the overwhelming similarities between Aldo's Accused Products and the Converse Midsole Trademark, and for the reasons set forth above, there is (a) a likelihood of 51 confusion between Aldo or its Accused Products, and Converse or the Converse Midsole Trademark, and/or (b) a likelihood of dilution. 147. On information and belief, Aldo intended to create associations with Converse when it copied the Converse Midsole Trademark. Indeed, Aldo's Accused Products have given rise to unwanted and unauthorized associations with Converse. See Beau Hayhoe & Olivia Hayhoe, The Product Review: A/do Sneakers, Siblings with Style (Jun. 16, 2014) http:/lsiblingswithstyleboh.wordpress.com/2014/06/16/the-product-review-aldo-sneakers/, Exhibit 49. E. Brian Lichtenberg, LLC 148. On information and belief, Respondent Brian Lichtenberg, LLC ("Brian Lichtenberg") is a California company with its principal place of business located at 825 11 Silver Lake Blvd, Los Angeles, CA 90026. See Dun & Bradstreet Business Background Report for Brian Lichtenberg, Hoovers (Sept. 22, 20 14), Exhibit 50; see also California Secretary of State Business Entity Detail for Brian Lichtenberg, LLC, Exhibit 51. 1. Brian Lichtenberg's Background 149. Founded in 2006, Brian Lichtenberg describes its business as "a smartly executed range ofuniversally chic streetwear." See Bio, Brian Lichtenberg, www.brianlichtenberg.com/bio.html (last visited Aug. 29, 2014), Exhibit 52. Brian Lichtenberg claims to have "single-handedly transformed streetwear into a highly coveted fashion commodity." Id. 150. Brian Lichtenberg's products are based on "tongue-in-cheek" reproductions of "iconic fashion houses such as Hermes, Balmain, Miu Miu, Burberry and Celine." Monica Leung, The rise ofthe BLTees -But What's Next for Brian Lichtenberg?, Influxxx, 52 http:/linfluxxx.com/2013/08/23/the-rise-of-the-bltees-but-whats-next-for-brian-lichtenberg-by- monica-leung (last visited Aug. 29, 2014), Exhibit 53. 2. Brian Lichtenberg's Accused Products 151. Brian Lichtenberg's Accused Products include at least its "Homies High Tops" footwear products and colorable imitations thereof. Representative images of Brian Lichtenberg's Accused Products are attached as Exhibit 54. 152. On information and belief, Brian Lichtenberg has promoted and sold additional shoe models bearing the Converse Midsole Trademark under various names and style descriptions. 153. On information and belief, in addition to the Accused Products, Brian Lichtenberg promotes and sells a variety of shoe designs that do not include the designs of its Accused Products and that do not violate the Asserted Trademarks. See Shoes & Footwear, Brian Lichtenberg, http://www. shopbrianlichtenberg.com/bltee/womens-shoes-footwear .html (last visited Aug. 29, 2014), Exhibit 55. 3. Brian Lichtenberg's Unfair Acts, Infringement, and Dilution of the Converse Midsole Trademark 154. On information and belief, Brian Lichtenberg manufactures, imports into the United States, promotes, distributes, and/or sells after importation in the United States Brian Lichtenberg's Accused Products shown below that infringe and/or are likely to dilute the Converse Midsole Trademark. a. Converse Owned Protectable and Famous Trademark Rights Before Brian Lichtenberg Promoted and Sold Accused Products 155. As a result of Converse's near century of substantially exclusive use ofthe Asserted Trademarks, substantial promotion and sales of products bearing the Asserted 53 Trademarks, widespread unsolicited publicity, and attempts to copy the Asserted Trademarks by others, as set forth above, Converse owned highly distinctive, well-recognized, and famous trademark rights in the Asserted Trademarks before Brian Lichtenberg promoted and sold Accused Products. 156. The Asserted Trademark relevant to Brian Lichtenberg's violations is also the subject of a duly issued United States Trademark Registration. b. Brian Lichtenberg's Accused Products Are Virtually Identical to the Converse Midsole Trademark 157. As shown in Figure 24 below, Brian Lichtenberg's Accused Products bear designs that are nearly identical to the Converse Midsole Trademark. FIGURE 24: Representative Images of Brian Lichtenberg's Accused Products and the Converse Asserted Trademark Accused Product Converse Asserted Trademark Representative Converse Shoe Homies High Tops c. Brian Lichtenberg Intended to Copy the Converse Midsole Trademark and to Infringe and Dilute the Converse Midsole Trademark 158. Brian Lichtenberg's intent to create associations with Converse and to free ride on Converse's goodwill is evident in the close similarities between Brian Lichtenberg's Accused Products on the one hand, and the Converse Midsole Trademark on the other hand. On 54 information and belief, the overwhelming similarities are due to Brian Lichtenberg's intentional copying. d. Brian Lichtenberg Promotes and Sells Accused Products in Competition With Converse's Promotion and Sales of Products Bearing the Asserted Trademarks 159. On information and belief, Brian Lichtenberg has promoted and sold its Accused Products by selling such products to retail stores in the United States and on the Internet. See Exhibit 41. For example, on information and belief, Brian Lichtenberg's Accused Products have been sold at Kitson retail stores, Shopbrianlichtenberg.com, and Revolveclothing.com. 160. On information and belief, Brian Lichtenberg's Accused Products have been promoted and sold at approximately $375, see Exhibit 23, and as low as $28, see Exhibit 41. 161. On information and belief, Brian Lichtenberg promotes and sells its Accused Products as casual or lifestyle shoe designs primarily to adult men and women. e. Relevant Consumers Are Susceptible to Confusion and Dilutive Associations Caused by Brian Lichtenberg's Accused Products 162. Consumers of shoes like those at issue here are not likely to exercise great care in resolving likely confusion in their initial product interest, at the point of purchase, or in post-sale exposure. Even more sophisticated consumers are likely to experience cognitive dissonance regarding the source, affiliation, sponsorship, or association of Brian Lichtenberg's Accused Products when confronted with promotions and sales of Brian Lichtenberg's Accused Products. 163. In the post-sale context, where actual or potential consumers of shoes may only see Brian Lichtenberg's Accused Products on someone's feet in passing, consumers are especially likely to mistake the source, affiliation, or sponsorship of Brian Lichtenberg's Accused Products with Converse and/or the Asserted Trademarks, or to associate the Accused Products with Converse and/or the Asserted Trademarks. 55 f. Brian Lichtenberg's Accused Products Are Likely to Cause Confusion and Dilutive Associations 164. Due to the overwhelming similarities between Brian Lichtenberg's Accused Products and the Converse Midsole Trademark, and for the reasons set forth above, there is (a) a likelihood of confusion between Brian Lichtenberg or its Accused Products, and Converse or the Converse Midsole Trademark, and/or (b) a likelihood of dilution. F. Cmerit USA Inc., d/b/a Gotta Flurt 165. On information and belief, Respondent Cmerit USA Inc., d/b/a Gotta Flurt ("Gotta Flurt"), is a California corporation with its principal place of business located at 13875 Ramona Ave., Chino, CA 91710. See Contact Page, Cmerit USA, http://www.cmeritusa.com/contact/ (last visited Sept. 29, 2014), Exhibit 56; see also California Secretary of State Business Entity Detail, Exhibit 57. 1. Gotta Flurt's Background 166. Gotta Flurt was founded in 2003 and describes itself as "a world-class footwear design and sourcing company with a portfolio oftrusted fashion and sport brands." See Who We Are, Cmerit USA, http://www.cmeritusa.com/what-we-do/ (last visited Aug. 29, 2014), Exhibit 58. 2. Gotta Flurt's Accused Products 167. Gotta Flurt's Accused Products include at least its "Twisty Zoo" footwear products and colorable imitations thereof Representative images ofGotta Flurt's Accused Products are attached as Exhibit 59. 168. On information and belief, Gotta Flurt has promoted and sold additional shoe models bearing the Converse Midsole Trademark under various names and style descriptions. 56 169. On information and belief, in addition to the Accused Products, Gotta Flurt 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. See Gotta Flurt Women's Shoes, 6PM, ｨｴｴｰＺＯＯｷｷｷＮＶｰｭＮ｣ｯｭＯｧｯｴｴ｡ＭｦｬｵｲｴＭｳｨｯ･ｳＭｯｮＭｳ｡ｬ･ｾＳ＠ (last visited Sept. 18, 2014), Exhibit 60 (excerpt from website). 3. Gotta Flurt's Unfair Acts, Infringement, and Dilution of the Converse Midsole Trademark 170. On information and belief, Gotta Flurt manufactures, imports into the United States, promotes, distributes, and/or sells after importation in the United States Gotta Flurt's Accused Products shown below that infringe and/or are likely to dilute the Converse Midsole Trademark. a. Converse Owned Protectable and Famous Trademark Rights Before Gotta Flurt Promoted and Sold Accused Products 171. As a result of Converse's near century of substantially exclusive use of the Asserted Trademarks, substantial promotion and sales of products bearing the Asserted Trademarks, widespread unsolicited publicity, and attempts to copy the Asserted Trademarks by others, as set forth above, Converse owned highly distinctive, well-recognized, and famous trademark rights in the Asserted Trademarks before Gotta Flurt promoted and sold Accused Products. 172. The Asserted Trademark relevant to Gotta Flurt's violations is also the subject of a duly issued United States Trademark Registration. b. Gotta Flurt's Accused Products Are Virtually Identical to the Converse Midsole Trademark 173. As shown in Figure 25 below, Gotta Flurt's Accused Products bear designs that are nearly identical to the Converse Midsole Trademark. 57 FIGURE 25: Representative Images of Gotta Flurt's Accused Products and the Converse Asserted Trademark Representative Converse Accused Product Converse Asserted Trademark Shoe _____, Twisty Zoo c. Gotta Flurt Intended to Copy the Converse Midsole Trademark and to Infringe and Dilute the Converse Midsole Trademark 174. Gotta Flurt's intent to create associations with Converse and to free ride on Converse's goodwill is evident in the close similarities between Gotta Flurt's Accused Products on the one hand, and the Converse Midsole Trademark on the other hand. On information and belief, the overwhelming similarities are due to Gotta Flurt's intentional copying. d. Gotta Flurt Promotes and Sells Accused Products in Competition With Converse's Promotion and Sales of Products Bearing the Asserted Trademarks 175. On information and belief, Gotta Flurt promotes and sells its Accused Products at retail stores in the United States and on the Internet. See Gotta Flurt Women's Twisty Zoo, Amazon, http://www.amazon.com/gp/product/B0087ZED58/ref=s9_ hps_bw _ g309 _ ir26?pf_rd_m=ATVP DKlKXODER&pf_rd_ s=merchandised-search- 9&pf_rd_r=OZ2QDP97T8ZWREOZ9EK5&pf_rd_t=101&pf_rd_p=1865586102&pf_rd_i=30297 97011 (last visited Sept. 18, 2014), Exhibit 61. For example, on information and belief, Gotta 58 Flurt sells Accused Products at DSW retail stores, Overstock.com, 6pm.com, amazon. com, and Zappos.com. 176. On information and belief, Gotta Flurt's Accused Products have been promoted and sold at approximately $36. See Exhibit 23. 177. On information and belief, Gotta Flurt promotes and sells its Accused Products as casual or lifestyle shoe designs primarily to young, pre-teen, and teen girls. e. Relevant Consumers Are Susceptible to Confusion and Dilutive Associations Caused by Gotta Flurt's Accused Products 178. Consumers of shoes like those at issue here are not likely to exercise great care in resolving likely confusion in their initial product interest, at the point of purchase, or in post-sale exposure. Even more sophisticated consumers are likely to experience cognitive dissonance regarding the source, affiliation, sponsorship, or association ofGotta Flurt's Accused Products when confronted with promotions and sales ofGotta Flurt's Accused Products. 179. In the post-sale context, where actual or potential consumers of shoes may only see Gotta Flurt's Accused Products on someone's feet in passing, consumers are especially likely to mistake the source, affiliation, or sponsorship ofGotta Flurt's Accused Products with Converse and/or the Asserted Trademarks, or to associate the Accused Products with Converse and/or the Asserted Trademarks. f. Gotta Flurt's Accused Products Are Likely to Cause Confusion and Dilutive Associations 180. Due to the overwhelming similarities between Gotta Flurt's Accused Products and the Converse Midsole Trademark, and for the reasons set forth above, there is (a) a likelihood of confusion between Gotta Flurt or its Accused Products, and Converse or the Converse Midsole Trademark, and/or (b) a likelihood of dilution. 59 181. On information and belief, Gotta Flurt intended to create associations with Converse when it copied the Converse Midsole Trademark. Indeed, Gotta Flurt's Accused Products have given rise to unwanted and unauthorized associations with Converse. See Gotta Flurt for under $30, forUnder, http://www.forunder.com/products/30/gotta-flurt/ (last visited Aug. 29, 2014), Compilation Exhibit 62 at 5; see also Gotta Flurt Pink Camouflage Converse Like No Lace Shoes, eBay, http://www.ebay.com/itm/Gotta-Flurt-pink-camouflage-converse- like-no-lace-shoes-size-2/3 50611407 4 3O?pt=US _ Childrens_ Shoes&hash =item51 a2118246 (last visited Aug. 29, 2014), Compilation Exhibit 62 at 8 (annotated); see also Customer Reviews, Amazon, http://www.amazon.com/Gotta-Flurt-Womens-Ca-Hidisco-Sneak:er/product- reviews/B004C27956/ref=cm_ cr_ dp_ synop?ie=UTF8&show Viewpoints=O&%E2%80%A6 (last visited Sept. 22, 2014), Compilation Exhibit 62 at 10 (annotated). G. Dioniso, SRL 182. On information and belief, Respondent Dioniso, SRL ("Dioniso") is an Italian corporation with its principal place ofbusiness located at Via Pievaiola 166-f2, 06132 Perugia, Italy. See Black Dioniso, http://www.blackdioniso.com/ (last visited Aug. 29, 2014), Exhibit 63. 1. Dioniso's Background 183. Dioniso began producing footwear in 2009, by adding "luxury materials and components" to "original and used Converse All Stars," which Dioniso describes as "one of the twentieth century ICONIC sneakers." See id. Thereafter, Dioniso admits that it began manufacturing its own shoes, using its own materials and production methods, see id., yet maintaining the iconic Converse Midsole Trademark. 60 2. Dioniso's Accused Products 184. Dioniso's Accused Products include at least its "Black Vintage Swarovski Converse" footwear products and colorable imitations thereof. Representative images of Dioniso's Accused Products are at Exhibit 64. 185. On information and belief, Dioniso has promoted and sold additional shoe models bearing the Converse Midsole Trademark under various names and style descriptions. 186. A wide variety of shoe designs that do not include the designs of its Accused Products and that do not violate the Asserted Trademarks are available to Dioniso. 3. Dioniso's Unfair Acts, Infringement, and Dilution of the Converse Midsole Trademark 187. On information and belief, Dioniso manufactures, imports into the United States, promotes, distributes, and/or sells after importation in the United States Dioniso's Accused Products shown below that infringe and/or are likely to dilute the Converse Midsole Trademark. a. Converse Owned Protectable and Famous Trademark Rights Before Dioniso Promoted and Sold Accused Products 188. As a result of Converse's near century of substantially exclusive use ofthe Asserted Trademarks, substantial promotion and sales of products bearing the Asserted Trademarks, widespread unsolicited publicity, and attempts to copy the Asserted Trademarks by others, as set forth above, Converse owned highly distinctive, well-recognized, and famous trademark rights in the Asserted Trademarks before Dioniso promoted and sold Accused Products. 189. The Asserted Trademark relevant to Dioniso's violations is also the subject of a duly issued United States Trademark Registration. 61 b. Dioniso's Accused Products Are Virtually Identical to the Converse Midsole Trademark 190. As shown in Figure 26 below, Dioniso's Accused Products bear designs that are nearly identical to the Converse Midsole Trademark. FIGURE 26: Representative Images of Dioniso's Accused Products and the Converse Asserted Trademark Representative Converse Accused Product Converse Asserted Trademark Shoe Black Vintage Swarovski Converse c. Dioniso Intended to Copy the Converse Midsole Trademark and to Infringe and Dilute the Converse Midsole Trademark 191. Dioniso 's intent to create associations with Converse and to free ride on Converse's goodwill is evident in the close similarities between Dioniso's Accused Products on the one hand, and the Converse Midsole Trademark on the other hand. On information and belief, the overwhelming similarities are due to Dioniso 's intentional copying. d. Dioniso Promotes and Sells Accused Products in Competition With Converse's Promotion and Sales of Products Bearing the Asserted Trademarks 192. On information and belief, Dioniso promotes and sells its Accused Products at retail stores in the United States and on the Internet. See Exhibit 39. 193. On information and belief, Dioniso 's Accused Products have been promoted and sold at approximately $1,295. See Exhibit 40. 62 194. On information and belief, Dioniso promotes and sells its Accused Products as casual or lifestyle shoe designs primarily to adult men and women. e. Relevant Consumers Are Susceptible to Confusion and Dilutive Associations Caused by Dioniso's Accused Products 195. Consumers of shoes like those at issue here are not likely to exercise great care in resolving likely confusion in their initial product interest, at the point of purchase, or in post-sale exposure. Even more sophisticated consumers are likely to experience cognitive dissonance regarding the source, affiliation, sponsorship, or association ofDioniso's Accused Products when confronted with promotions and sales ofDioniso's Accused Products. 196. In the post-sale context, where actual or potential consumers of shoes may only see Dioniso's Accused Products on someone's feet in passing, consumers are especially likely to mistake the source, affiliation, or sponsorship of Dioniso 's Accused Products with Converse and/or the Asserted Trademarks, or to associate the Accused Products with Converse and/or the Asserted Trademarks. f. Dioniso's Accused Products Are Likely to Cause Confusion and Dilutive Associations 197. Due to the overwhelming similarities between Dioniso's Accused Products and the Converse Midsole Trademark, and for the reasons set forth above, there is (a) a likelihood of confusion between Dioniso or its Accused Products, and Converse or the Converse Midsole Trademark, and/or (b) a likelihood of dilution. 198. On information and belief, Dioniso intended to create associations with Converse when it copied the Converse Midsole Trademark. Indeed, Dioniso's Accused Products have given rise to unwanted and unauthorized associations with Converse. See Dioniso Fall2013 63 Collection, R-A-W Shoes Blog, http://r-a-wshoesblog.com/dioniso-fall-2013-collection/ (last visited Aug. 29, 2014), Exhibit 65. H. Edamame Kids, Inc. 199. On information and belief, Respondent Edamame Kids, Inc. ("Edamame") is a Canadian corporation with its principal place of business located at 1911-34 Avenue SW, Calgary, Alberta T2T 2C2, Canada. See Dun & Bradstreet Report for Edamame (last updated Jul. 26, 2013), Exhibit 66. On information and belief, Edamame is related to or affiliated with Respondent Mamiye Imports LLC d/b/a Lilly ofNew York. 1. Edamame's Accused Products 200. Edamame's Accused Products include at least its "Canvas Low-Top" footwear products and colorable imitations thereof Representative images ofEdamame's Accused Products are attached as Exhibit 67. 201. On information and belief, Edamame has promoted and sold additional shoe models bearing the Converse Midsole Trademark under various names and style descriptions. 202. A wide variety of shoe designs that do not include the designs of its Accused Products and that do not violate the Asserted Trademarks are available to Edamame. 2. Edamame's Unfair Acts, Infringement, and Dilution ofthe Converse Midsole Trademark 203. On information and belief, Edamame manufactures, imports into the United States, promotes, distributes, and/or sells after importation in the United States Edamame's Accused Products shown below that infringe and/or are likely to dilute the Converse Midsole Trademark. 64 a. Converse Owned Protectable and Famous Trademark Rights Before Edamame Promoted and Sold Accused Products 204. As a result of Converse's near century of substantially exclusive use ofthe Asserted Trademarks, substantial promotion and sales of products bearing the Asserted Trademarks, widespread unsolicited publicity, and attempts to copy the Asserted Trademarks by others, as set forth above, Converse owned highly distinctive, well-recognized, and famous trademark rights in the Asserted Trademarks before Edamame promoted and sold Accused Products. 205. The Asserted Trademark relevant to Edamame's violations is also the subject of a duly issued United States Trademark Registration. b. Edamame's Accused Products Are Virtually Identical to the Converse Midsole Trademark 206. As shown in Figure 27 below, Edamame's Accused Products bear designs that are nearly identical to the Converse Midsole Trademark. 65 FIGURE 27: Representative Images of Edamame's Accused Products and the Converse Asserted Trademark Representative Accused Product Converse Asserted Trademark Converse Shoe Canvas Purple Low-Top Canvas Black Low-Top c. Edamame Intended to Copy the Converse Midsole Trademark and to Infringe and Dilute the Converse Midsole Trademark 207. Edamame's intent to create associations with Converse and to free ride on Converse's goodwill is evident in the close similarities between Edamame's Accused Products on the one hand, and the Converse Midsole Trademark on the other hand. On information and belief, the overwhelming similarities are due to Edamame's intentional copying. d. Edamame Promotes and Sells Accused Products in Competition With Converse's Promotion and Sales of Products Bearing the Asserted Trademarks 208. On information and belief, Edamame promotes and sells its Accused Products at retail stores in the United States and on the Internet. See Edamame Pink Black Canvas Low Top 66 Sneakers Shoes, Sears, http://www. sears.com/ edamame-pink-black-canvas-low- top-sneakers- shoes/p-SPM7098324803 (last visited Aug. 29, 2014), Exhibit 68. For example, on information and belief, Edamame sells Accused Products at Sears retail stores and Babyhalfoff.com. 209. On information and belief, Edamame' s Accused Products have been promoted and sold at approximately $22, see Exhibit 23, and as low as $6.1 0, see Edamame Pink Black Canvas Low Top Sneakers Shoes, Sophia's Style, www.sophiasstyle.com (last visited Sept. 29, 2014), Exhibit 69. 210. On information and belief, Edamame promotes and sells its Accused Products as casual or lifestyle shoe designs primarily to young girls and boys. e. Relevant Consumers Are Susceptible to Confusion and Dilutive Associations Caused by Edamame's Accused Products 211. Consumers of shoes like those at issue here are not likely to exercise great care in resolving likely confusion in their initial product interest, at the point of purchase, or in post-sale exposure. Even more sophisticated consumers are likely to experience cognitive dissonance regarding the source, affiliation, sponsorship, or association ofEdamame's Accused Products when confronted with promotions and sales ofEdamame's Accused Products. 212. In the post-sale context, where actual or potential consumers of shoes may only see Edamame's Accused Products on someone's feet in passing, consumers are especially likely to mistake the source, affiliation, or sponsorship ofEdamame's Accused Products with Converse and/or the Asserted Trademarks, or to associate the Accused Products with Converse and/or the Asserted Trademarks. 67 f. Edamame's Accused Products Are Likely to Cause Confusion and Dilutive Associations 213. Due to the overwhelming similarities between Edamame 's Accused Products and the Converse Midsole Trademark, and for the reasons set forth above, there is (a) a likelihood of confusion between Edamame or its Accused Products, and Converse or the Converse Midsole Trademark, and/or (b) a likelihood of dilution. I. Esquire Footwear 214. On information and belief, Respondent Esquire Footwear ("Esquire") is a New York company with its principal place of business located at 3 85 5th A venue, Second Floor, New York, NY 10016. See Contact, Esquire Footwear, http://www.esquirefootwear.com/contact/ (last visited Oct. 8, 2014), Compilation Exhibit 71 at 2; see also NYS Department of State Division of Corporations Entity Information for Esquire Footwear LLC, Exhibit 70. 1. Esquire's Background 215. Esquire purports to be a "family owned and operated enterprise, specializing in the design, and manufacturing of high quality fashion footwear." See About Us, Esquire Footwear, http://www.esquirefootwear.com/about-us/ (last visited Aug. 29, 2014), Compilation Exhibit 71 at 1. 216. On September 5, 2013, Converse sent a cease and desist letter to Esquire demanding, inter alia, that it stop violating the Converse Midsole Trademark and the '960 and '1 03 Registrations. Esquire refused to enter into a settlement agreement. On information and belief, it continued selling Accused Products. 68 2. Esquire's Accused Products 217. Esquire's Accused Products include at least its "Shoe" footwear products and colorable imitations thereof Representative images of Esquire's Accused Products are attached as Exhibit 72. 218. On information and belief, Esquire has promoted and sold additional shoe models bearing the Converse Midsole Trademark under various names and style descriptions. 219. On information and belief, in addition to the Accused Products, Esquire 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. See Esquire Footwear, Facebook, https://www.facebook.com/EsquireFootwear (last visited Aug. 29, 2014), Exhibit 73. 3. Esquire's Unfair Acts, Infringement, and Dilution of the Converse Midsole Trademark and the Converse Outsole Trademark 220. On information and belief, Esquire manufactures, imports into the United States, promotes, distributes, and/or sells after importation in the United States Esquire's Accused Products shown below that infringe and/or are likely to dilute one or more of the Asserted Trademarks. a. Converse Owned Protectable and Famous Trademark Rights Before Esquire Promoted and Sold Accused Products 221. As a result of Converse's near century of substantially exclusive use ofthe Asserted Trademarks, substantial promotion and sales of products bearing the Asserted Trademarks, and widespread unsolicited publicity and copying of the Asserted Trademarks, as set forth above, Converse owned highly distinctive, well-recognized, and famous trademark rights in the Asserted Trademarks before Esquire promoted and sold Accused Products. 222. Each of the Asserted Trademarks relevant to Esquire's violations is also the subject of duly issued United States Trademark Registrations. 69 b. Esquire's Accused Products Are Virtually Identical to the Converse Midsole Trademark and the Converse Outsole Trademark 223 . As shown in Figure 28 below, Esquire's Accused Products bear designs that are nearly identical to the Converse Midsole Trademark and the Converse Outsole Trademark. FIGURE 28: Representative Images of Esquire's Accused Products and the Converse Asserted Trademarks Representative Accused Product Converse Asserted Trademark Converse Shoe Shoe Shoe c. Esquire Intended to Copy the Converse Midsole Trademark and the Converse Outsole Trademark and to Violate the Converse Midsole Trademark and the Converse Outsole Trademark 224. Esquire's intent to create associations with Converse and to free ride on Converse's goodwill is evident in the close similarities between Esquire's Accused Products on the one hand, and the Converse Midsole Trademark and the Converse Outsole Trademark on the other hand. On information and belief, the overwhelming similarities are due to Esquire's intentional copying. 70 d. Esquire Promotes and Sells Accused Products in Competition With Converse's Promotion and Sales of Products Bearing the Asserted Trademarks 225. On information and belief, Esquire promotes and sells its Accused Products at trade shows in the United States. See Exhibit 74 (depicting Esquire's Accused Products photographed at the WSA show in Las Vegas, NV in August, 2013). On information and belief, Esquire products are purchased by brick and mortar and online retailers for sale in the United States. See Our Strengths, Esquire Footwear, www.esquirefootwear.com/our-strengths (last visited Sept. 29, 2014), Exhibit 75. 226. On information and belief, Esquire promotes and sells its Accused Products as casual or lifestyle shoe designs primarily to adult women. e. Relevant Consumers Are Susceptible to Confusion and Dilutive Associations Caused by Esquire's Accused Products 227. Consumers of shoes like those at issue here are not likely to exercise great care in resolving likely confusion in their initial product interest, at the point of purchase, or in post-sale exposure. Even more sophisticated consumers are likely to experience cognitive dissonance regarding the source, affiliation, sponsorship, or association of Esquire's Accused Products when confronted with promotions and sales ofEsquire's Accused Products. 228. In the post-sale context, where actual or potential consumers of shoes may only see Esquire's Accused Products on someone' s feet in passing, consumers are especially likely to mistake the source, affiliation, or sponsorship ofEsquire's Accused Products with Converse and/or the Asserted Trademarks, or to associate the Accused Products with Converse and/or the Asserted Trademarks. 71 f. Esquire's Accused Products Are Likely to Cause Confusion and Dilutive Associations 229. Due to the overwhelming similarities between Esquire's Accused Products and the Converse Midsole and Outsole Trademarks, and for the reasons set forth above, there is (a) a likelihood of confusion between Esquire or its Accused Products, and Converse, the Converse Midsole Trademark, and/or the Converse Outsole Trademark, and/or (b) a likelihood of dilution. J. FILA U.S.A., Inc. 230. Respondent FILA U.S.A., Inc. ("FILA"), is a Maryland corporation with its principal place of business located at 930 Ridge brook Road, Suite 200, Sparks, MD 21152. See Hoovers Profile for FILA, Exhibit 76; see also Maryland Department of Assessments & Taxation Business Information for FILA, Exhibit 77. On information and belief, FILA is a subsidiary ofFILA Korea, Ltd., located at 6 Myeongdal-Ro, Seocho-Gu, 137868 Seoul, South Korea. See Exhibit 76. 1. FILA's Background 231. FILA was founded in Italy in 1911, and eventually went public in the United States in 1993. See Susan Kitchens, Rebound, Forbes (Jun. 12, 2008), http://www.forbes.com/forbes/2008/0630/066.html, Exhibit 78. In the 2000s, the company again went private and changed focus: "selling workout sneakers and apparel through a number of mass-market retailers, including Foot Locker and Kohl's," id., two ofConverse's largest retailers. 2. FILA's Accused Products 232. FILA's Accused Products include at least its "Original Canvas" footwear products and colorable imitations thereof Representative images ofFILA's Accused Products are at Exhibit 79. 72 233. On information and belief, FILA has promoted and sold additional shoe models bearing the Converse Midsole Trademark under various names and style descriptions. 234. On information and belief, in addition to the Accused Products, FILA 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. See Footwear, FILA, http://www .fila.cornlmens-shoes?gclid=CJGK2YnjpMACFSdk7 AodrCkAJA (last visited Aug. 29, 2014), Exhibit 80. 3. FILA's Unfair Acts, Infringement, and Dilution ofthe Converse Midsole Trademark 235. On information and belief, FILA manufactures, imports into the United States, promotes, distributes, and/or sells after importation in the United States FILA's Accused Products shown below that infringe and/or are likely to dilute the Converse Midsole Trademark. a. Converse Owned Protectable and Famous Trademark Rights Before FILA Promoted and Sold Accused Products 236. As a result of Converse's near century of substantially exclusive use ofthe Asserted Trademarks, substantial promotion and sales of products bearing the Asserted Trademarks, widespread unsolicited publicity, and attempts to copy the Asserted Trademarks by others, as set forth above, Converse owned highly distinctive, well-recognized, and famous trademark rights in the Asserted Trademarks before FILA promoted and sold Accused Products. 237. The Asserted Trademark relevant to FILA's violations is also the subject of a duly issued United States Trademark Registration. b. FILA's Accused Products Are Virtually Identical to the Converse Midsole Trademark 238. As shown in Figure 29 below, FILA's Accused Products bear designs that are nearly identical to the Converse Midsole Trademark. 73 FIGURE 29: Representative Images of FILA's Accused Products and the Converse Asserted Trademark Representative Accused Product Converse Asserted Trademark Converse Shoe Original Canvas c. FILA Intended to Copy the Converse Midsole Trademark and to Infringe and Dilute the Converse Midsole Trademark 239. FILA's intent to create associations with Converse and to free ride on Converse's goodwill is evident in the close similarities between FILA's Accused Products on the one hand, and the Converse Midsole Trademark on the other hand. On information and belief, the overwhelming similarities are due to FILA's intentional copying. d. FILA Promotes and Sells Accused Products in Competition With Converse's Promotion and Sales of Products Bearing the Asserted Trademarks 240. On information and belief, FILA promotes and sells its Accused Products at retail stores in the United States and on the Internet. See FILA Original Canvas SE Casual Shoe, Shoezoo, http://www .shoezoo.com/fila-original-canvas-se-casual-shoes-1 vb053ck-071.html, Exhibit 81. For example, on information and belief, FILA sells Accused Products in Saks Fifth A venue retail stores, Sears retail stores, and Shoezoo.com. 241. On information and belief, FILA's Accused Products have been promoted and sold at approximately $22. See Exhibit 23. 74 242. On information and belief, FILA promotes and sells its Accused Products as casual or lifestyle shoe designs primarily to adult men and women. e. Relevant Consumers Are Susceptible to Confusion and Dilutive Associations Caused by FILA's Accused Products 243. Consumers of shoes like those at issue here are not likely to exercise great care in resolving likely confusion in their initial product interest, at the point of purchase, or in post-sale exposure. Even more sophisticated consumers are likely to experience cognitive dissonance regarding the source, affiliation, sponsorship, or association ofFILA's Accused Products when confronted with promotions and sales of FILA's Accused Products. 244. In the post-sale context, where actual or potential consumers of shoes may only see FILA's Accused Products on someone's feet in passing, consumers are especially likely to mistake the source, affiliation, or sponsorship ofFILA's Accused Products with Converse and/or the Asserted Trademarks, or to associate the Accused Products with Converse and/or the Asserted Trademarks. f. FILA's Accused Products Are Likely to Cause Confusion and Dilutive Associations 245. Due to the overwhelming similarities between FILA's Accused Products and the Converse Midsole Trademark, and for the reasons set forth above, there is (a) a likelihood of confusion between FILA or its Accused Products, and Converse or the Converse Midsole Trademark, and/or (b) a likelihood of dilution. K. Fortune Dynamic, Inc. 246. On information and belief, Respondent Fortune Dynamic, Inc. ("Fortune Dynamic") is a California corporation with its principal place of business located at 21923 Ferrero Parkway, City oflndustry, CA 91789-5210. See Dun & Bradstreet Report for Fortune 75 Dynamic (last updated May 27, 2013), Exhibit 82; see also California Secretary of State Business Entity Detail for Fortune Dynamic Inc., Exhibit 83. 1. Fortune Dynamic's Background 247. Fortune Dynamic purports to be an "importer and wholesaler ofwomen's and girl's shoes," active in the footwear industry since 1987, and located in the City oflndustry region of California. See About Us, Fortune Dynamic, www.fortunedynamic.com/company.c:fin (last visited Oct. 2, 2014), Exhibit 84. 248. On February 7, 2012, Converse served a cease and desist letter on Fortune Dynamic at the WSA trade show in Las Vegas, NV, demanding, inter alia, that it stop violating the Converse Midsole Trademark. Fortune Dynamic refused to enter into a settlement agreement. On information and belief, Fortune Dynamic continued selling Accused Products. 2. Fortune Dynamic's Accused Products 249. Fortune Dynamic's Accused Products include at least its "SODA-SPY" footwear products and colorable imitations thereof Representative images of Fortune Dynamic's Accused Products are attached as Exhibit 85. 250. On information and belief, Fortune Dynamic has promoted and sold additional shoe models bearing the Converse Midsole Trademark under various names and style descriptions. 251. On information and belief, in addition to the Accused Products, Fortune Dynamic 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. See Soda Shoes, http://www.sodashoes.com/collections.c:fin (last visited Oct. 2, 2014), Exhibit 86. 76 3. Fortune Dynamic's Unfair Acts, Infringement, and Dilution of the Converse Midsole Trademark 252. On information and belief, Fortune Dynamic manufactures, imports into the United States, promotes, distributes, and/or sells after importation in the United States Fortune Dynamic's Accused Products shown below that infringe and/or are likely to dilute the Converse Midsole Trademark. a. Converse Owned Protectable and Famous Trademark Rights Before Fortune Dynamic Promoted and Sold Accused Products 253. As a result of Converse's near century of substantially exclusive use of the Asserted Trademarks, substantial promotion and sales of products bearing the Asserted Trademarks, widespread unsolicited publicity, and attempts to copy the Asserted Trademarks by others, as set forth above, Converse owned highly distinctive, well-recognized, and famous trademark rights in the Asserted Trademarks before Fortune Dynamic promoted and sold Accused Products. 254. The Asserted Trademark relevant to Fortune Dynamic's violations is also the subject of a duly issued United States Trademark Registration. b. Fortune Dynamic's Accused Products Are Virtually Identical to the Converse Midsole Trademark 255. As shown in Figure 30 below, Fortune Dynamic's Accused Products bear designs that are nearly identical to the Converse Midsole Trademark. 77 FIGURE 30: Representative Images of Fortune Dynamic's Accused Products and the Converse Asserted Trademark Representative Accused Product Converse Asserted Trademark Converse Shoe SODA-SPY c. Fortune Dynamic Intended to Copy the Converse Midsole Trademark and to Infringe and Dilute the Converse Midsole Trademark 256. Fortune Dynamic's intent to create associations with Converse and to free ride on Converse's goodwill is evident in the close similarities between Fortune Dynamic's Accused Products on the one hand, and the Converse Midsole Trademark on the other hand. On information and belief, the overwhelming similarities are due to Fortune Dynamic intentional copymg. d. Fortune Dynamic Promotes and Sells Accused Products in Competition With Converse's Promotion and Sales of Products Bearing the Asserted Trademarks 257. On information and belief, Fortune Dynamic promotes and sells its Accused Products at retail stores in the United States and on the Internet. See Happy Soda SPY II Black/White, Shoe Station, http://www .shoestation.com/Happy-Soda/Happy-Soda-SPY-II- BlackWhite/PAMPIALJAKOAONMK/3000-14411444/Product (last visited Sept. 1, 2014), Exhibit 87. For example, on information and belief, Fortune Dynamic has sold Accused Products on Shoestation.com. 78 258. On information and belief, Fortune Dynamic's Accused Products have been promoted and sold at approximately $25. See Exhibit 23. 259. On information and belief, Fortune Dynamic promotes and sells its Accused Products as casual or lifestyle shoe designs primarily to young, pre-teen, teen, and adult women. e. Relevant Consumers Are Susceptible to Confusion and Dilutive Associations Caused by Fortune Dynamic's Accused Products 260. Consumers of shoes like those at issue here are not likely to exercise great care in resolving likely confusion in their initial product interest, at the point of purchase, or in post-sale exposure. Even more sophisticated consumers are likely to experience cognitive dissonance regarding the source, affiliation, sponsorship, or association of Fortune Dynamic's Accused Products when confronted with promotions and sales of Fortune Dynamic's Accused Products. 261. In the post-sale context, where actual or potential consumers of shoes may only see Fortune Dynamic's Accused Products on someone's feet in passing, consumers are especially likely to mistake the source, affiliation, or sponsorship of Fortune Dynamic's Accused Products with Converse and/or the Asserted Trademarks, or to associate the Accused Products with Converse and/or the Asserted Trademarks. f. Fortune Dynamic's Accused Products Are Likely to Cause Confusion and Dilutive Associations 262. Due to the overwhelming similarities between Fortune Dynamic's Accused Products and the Converse Midsole Trademark, and for the reasons set forth above, there is (a) a likelihood of confusion between Fortune Dynamic or its Accused Products, and Converse or the Converse Midsole Trademark, and/or (b) a likelihood of dilution. 79 L. Gina Group, LLC 263. On information and belief, Respondent Gina Group, LLC ("Gina Group") is a New York company with its principal place of business located at 10 West 33rd Street, 3rd Floor, New York, NY 10001. See Contact, Gina Group, http://www.ginagroup.com/contact.asp (last visited Jul. 27, 2014), Compilation Exhibit 88, at 1; see also NYS Department of State Division of Corporations Entity Information for Gina Group LLC, Exhibit 89. 1. Gina Group's Background 264. Gina Group purports to have started as a private label company over 20 years ago, entering the retail market with a line of tights, pantyhose, and socks. See Company, Gina Group, http://www.ginagroup.com/company.asp (last visited Aug. 29, 2014), Compilation Exhibit 88, at 2. Gina Group also sells footwear, intimate apparel, cold weather gear, and fashion accessories. See id. 265. On February 8, 2011, Converse sent a cease and desist letter to Gina Group demanding that it stop violating the Converse Midsole Trademark. Gina Group refused to enter into a settlement agreement. On information and belief, it continued selling Accused Products. 2. Gina Group's Accused Products 266. Gina Group's Accused Products include at least its "Chatties Zebra Hi-Top" footwear products and colorable imitations thereof. Representative images of Gina Group's Accused Products are attached as Exhibit 90. 267. On information and belief, Gina Group has promoted and sold additional shoe models bearing the Converse Midsole Trademark under various names and style descriptions. 268. On information and belief, in addition to the Accused Products, Gina Group 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. See Chatties, Zulily, 80 http://www.zulily.com/brand/chatties.html (last visited Aug. 29, 2014), Exhibit 91 (excerpt from website). 3. Gina Group's Unfair Acts, Infringement, and Dilution of the Converse Midsole Trademark 269. On information and belief, Gina Group manufactures, imports into the United States, promotes, distributes, and/or sells after importation in the United States Gina Group's Accused Products shown below that infringe and/or are likely to dilute the Converse Midsole Trademark. a. Converse Owned Protectable and Famous Trademark Rights Before Gina Group Promoted and Sold Accused Products 270. As a result of Converse's near century of substantially exclusive use of the Asserted Trademarks, substantial promotion and sales of products bearing the Asserted Trademarks, widespread unsolicited publicity, and attempts to copy the Asserted Trademarks by others, as set forth above, Converse owned highly distinctive, well-recognized, and famous trademark rights in the Asserted Trademarks before Gina Group promoted and sold Accused Products. 271. The Asserted Trademark relevant to Gina Group's violations is also the subject of a duly issued United States Trademark Registration. b. Gina Group's Accused Products Are Virtually Identical to the Converse Midsole Trademark 272. As shown in Figure 31 below, Gina Group's Accused Products bear designs that are nearly identical to the Converse Midsole Trademark. 81 FIGURE 31: Representative Images of Gina Group's Accused Products and the Converse Asserted Trademark Representative Converse Accused Product Converse Asserted Trademark Shoe Chatties Zebra Hi-Top c. Gina Group Intended to Copy the Converse Midsole Trademark and to Infringe and Dilute the Converse Midsole Trademark 273 . Gina Group's intent to create associations with Converse and to free ride on Converse's goodwill is evident in the close similarities between Gina Group's Accused Products on the one hand, and the Converse Midsole Trademark on the other hand. On information and belief, the overwhelming similarities are due to Gina Group's intentional copying. d. Gina Group Promotes and Sells Accused Products in Competition With Converse's Promotion and Sales of Products Bearing the Asserted Trademarks 274. On information and belief, Gina Group promotes and sells its Accused Products at retail stores in the United States and on the Internet. See Light Pink & Black Zebra Hi-Top Sneaker, Zulily, http:/ /www.zulily.com/chatties- sneakers?fromSearch=true&searchTerm=chatties+sneakers (last visited Sept. 1, 2014), Exhibit 92. For example, on information and belief, Gina Group sells Accused Products at Zulily.com and Thredup.com. 275. On information and belief, Gina Group's Accused Products have been promoted and sold at approximately $9. See Exhibit 23 . 82 276. On information and belief, Gina Group promotes and sells its Accused Products as casual or lifestyle shoe designs primarily to young and pre-teen girls. e. Relevant Consumers Are Susceptible to Confusion and Dilutive Associations Caused by Gina Group's Accused Products 277. Consumers of shoes like those at issue here are not likely to exercise great care in resolving likely confusion in their initial product interest, at the point of purchase, or in post-sale exposure. Even more sophisticated consumers are likely to experience cognitive dissonance regarding the source, affiliation, sponsorship, or association of Gina Group's Accused Products when confronted with promotions and sales of Gina Group's Accused Products. 278. In the post-sale context, where actual or potential consumers of shoes may only see Gina Group's Accused Products on someone's feet in passing, consumers are especially likely to mistake the source, affiliation, or sponsorship ofGina Group's Accused Products with Converse and/or the Asserted Trademarks, or to associate the Accused Products with Converse and/or the Asserted Trademarks. f. Gina Group's Accused Products Are Likely to Cause Confusion and Dilutive Associations 279. Due to the overwhelming similarities between Gina Group's Accused Products and the Converse Midsole Trademark, and for the reasons set forth above, there is (a) a likelihood of confusion between Gina Group or its Accused Products, and Converse or the Converse Midsole Trademark, and/or (b) a likelihood of dilution. M. H & M Hennes & Mauritz LP 280. On information and belief, Respondent H & M Hennes & Mauritz LP ("H & M") is a New York corporation with a principal place ofbusiness located at 215 Park Avenue, 15th Floor, New York, NY 10003. See Contact Us, H & M, http://about.hm.com/en/About/Contacts 83 /contact-us.html (last visited Jul. 27, 2014), Compilation Exhibit 93, at 3; see also NYS Department of State Division of Corporations Entity Information for H & M, Exhibit 94. 1. H & M's Background 281. H & M opened in Vasteras, Sweden in 1947, selling predominantly women's clothing. See Our History, H & M, http://about.hm.com/en/About/facts-about-hm/people-and• history/history.html (last visited Oct. 2, 2014), Compilation Exhibit 93, at 4-6. H & M opened its first United States store on Fifth Avenue in New York in 2000. 282. At least one commentator has described H &Mas the "king ofknockoffstores." See Olivia Fleming, H&M accused of 'having no shame' as latest collection looks 'identical' to high-end designs by Balenciaga, Celine and Kenzo, Mail Online (May 24, 2013) http://www.dailymail.co.uk/femail/article-2330411/H-M-accused-having-shame-latest• collection-looks-identical-high-end-designs-Balenciaga-Celine-Kenzo .html, Exhibit 95. 2. H & M's Accused Products 283. H & M' s Accused Products include at least its "High-Tops" footwear products and colorable imitations thereof. Representative images ofH & M's Accused Products are attached as Exhibit 96. 284. On information and belief, H & M has promoted and sold additional shoe models bearing the Converse Midsole Trademark under various names and style descriptions. 285. On information and belief, in addition to the Accused Products, H & M 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. See Shoes, H & M, www.hm.com/shoes (last visited Aug. 29, 2014), Exhibit 97. 84 3. H & M's Unfair Acts, Infringement, and Dilution of the Converse Midsole Trademark 286. On information and belief, H & M manufactures, imports into the United States, promotes, distributes, and/or sells after importation in the United States H & M's Accused Products shown below that infringe and/or are likely to dilute the Converse Midsole Trademark a. Converse Owned Protectable and Famous Trademark Rights Before H & M Promoted and Sold Accused Products 287. As a result of Converse's near century of substantially exclusive use ofthe Asserted Trademarks, substantial promotion and sales of products bearing the Asserted Trademarks, widespread unsolicited publicity, and attempts to copy the Asserted Trademarks by others, as set forth above, Converse owned highly distinctive, well-recognized, and famous trademark rights in the Asserted Trademarks before H & M promoted and sold Accused Products. 288. The Asserted Trademark relevant to H & M's violations is also the subject of a duly issued United States Trademark Registration. b. H & M's Accused Products Are Virtually Identical to the Converse Midsole Trademark 289. As shown in Figure 32 below, H & M's Accused Products bear designs that are nearly identical to the Converse Midsole Trademark 85 FIGURE 32: Representative Images ofH & M's Accused Products and the Converse Asserted Trademark Representative Converse Accused Product Converse Asserted Trademark Shoe High-Tops c. H & M Intended to Copy the Converse Midsole Trademark and to Infringe and Dilute the Converse Midsole Trademark 290. H & M's intent to create associations with Converse and to free ride on Converse's goodwill is evident in the close similarities between H & M's Accused Products on the one hand, and the Converse Midsole Trademark on the other hand. On information and belief, the overwhelming similarities are due to H & M' s intentional copying. d. H & M Promotes and Sells Accused Products in Competition With Converse's Promotion and Sales of Products Bearing the Asserted Trademarks 291. On information and belief, H & M promotes and sells its Accused Products its retail stores in the United States and on the Internet. See High Tops, H & M, http://www.hm.com/us/product/ 12582?article=12582-C (last visited Aug. 29, 2014), Exhibit 98. 292. On information and belief, H & M's Accused Products have been promoted and sold at approximately $13. See Exhibit 23. 293. On information and belief, H & M promotes and sells its Accused Products as casual or lifestyle shoe designs primarily to pre-teen and teen girls. 86 e. Relevant Consumers Are Susceptible to Confusion and Dilutive Associations Caused by H & M's Accused Products 294. Consumers of shoes like those at issue here are not likely to exercise great care in resolving likely confusion in their initial product interest, at the point of purchase, or in post-sale exposure. Even more sophisticated consumers are likely to experience cognitive dissonance regarding the source, affiliation, sponsorship, or association ofH & M's Accused Products when confronted with promotions and sales ofH & M's Accused Products. 295. In the post-sale context, where actual or potential consumers of shoes may only see H & M' s Accused Products on someone' s feet in passing, consumers are especially likely to mistake the source, affiliation, or sponsorship ofH & M's Accused Products with Converse and/or the Asserted Trademarks, or to associate the Accused Products with Converse and/or the Asserted Trademarks. f. H & M's Accused Products Are Likely to Cause Confusion and Dilutive Associations 296. Due to the overwhelming similarities between H & M's Accused Products and the Converse Midsole Trademark, and for the reasons set forth above, there is (a) a likelihood of confusion between H & M or its Accused Products, and Converse or the Converse Midsole Trademark, and/or (b) a likelihood of dilution. N. Highline United LLC d/b/a ASH Footwear USA 297. On information and belief, Respondent Highline United LLC, d/b/a ASH Footwear USA ("ASH"), is a Delaware corporation with its principal place of business located at 44 Mercer Street, New York, NY 10013. See Contact, ASH, http://store.ashfootwearusa.com/contact.html (last visited Aug. 29, 2014), Exhibit 99; see also NYS Department of State Division of Corporations Entity Information for Highline United LLC, Exhibit 100. 87 1. ASH's Background 298. On information and belief, ASH was founded in 2000, and opened its first United States store in New York in 2011. 2. ASH's Accused Products 299. ASH's Accused Products include at least its "Vincent" footwear products and colorable imitations thereof Representative images of ASH's Accused Products are attached as Exhibit 101. 300. On information and belief, ASH has promoted and sold additional shoe models bearing the Converse Midsole Trademark under various names and style descriptions. 301. On information and belief, in addition to the Accused Products, ASH 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. See Womens Boots & Booties, ASH, http://store.ashfootwearusa.com/bootsbooties.html (last visited Sept. 1, 20 14), Exhibit 102. 3. ASH's Unfair Acts, Infringement, and Dilution of the Converse Midsole Trademark 302. On information and belief, ASH manufactures, imports into the United States, promotes, distributes, and/or sells after importation in the United States ASH's Accused Products shown below that infringe and/or are likely to dilute the Converse Midsole Trademark. a. Converse Owned Protectable and Famous Trademark Rights Before ASH Promoted and Sold Accused Products 303. As a result of Converse's near century of substantially exclusive use ofthe Asserted Trademarks, substantial promotion and sales of products bearing the Asserted Trademarks, widespread unsolicited publicity, and attempts to copy the Asserted Trademarks by others, as set forth above, Converse owned highly distinctive, well-recognized, and famous trademark rights in the Asserted Trademarks before ASH promoted and sold Accused Products. 88 304. The Asserted Trademark relevant to ASH's violations is also the subject of a duly issued United States Trademark Registration. b. ASH's Accused Products Are Virtually Identical to the Converse Midsole Trademark 305. As shown in Figure 33 below, ASH's Accused Products bear designs that are nearly identical to the Converse Midsole Trademark. FIGURE 33: Representative Images of ASH's Accused Products and the Converse Asserted Trademark Representative Accused Product Converse Asserted Trademark Converse Shoe Vincent c. ASH Intended to Copy the Converse Midsole Trademark and to Infringe and Dilute the Converse Midsole Trademark 306. ASH's intent to create associations with Converse and to free ride on Converse's goodwill is evident in the close similarities between ASH's Accused Products on the one hand, and the Converse Midsole Trademark on the other hand. On information and belief, the overwhelming similarities are due to ASH's intentional copying. d. ASH Promotes and Sells Accused Products in Competition With Converse's Promotion and Sales of Products Bearing the Asserted Trademarks 307. On information and belief, ASH promotes and sells its Accused Products in retail stores in the United States and on the Internet. See ASH Vincent Mens Sneaker Black Leather 89 312032, ASH, http://store.ashfootwearusa.com/vincent-s12-black-leather.html (last visited Jul. 27, 2014), Exhibit 103. For example, on information and belief, ASH sells Accused Products at ASH retail stores, Bloomingdales retail stores, Nordstrom retail stores, and Zappos.com. 308. On information and belief, ASH's Accused Products have been promoted and sold at approximately $80. See Exhibit 23. 309. On information and belief, ASH promotes and sells its Accused Products as casual or lifestyle shoe designs primarily to adult men and women. e. Relevant Consumers Are Susceptible to Confusion and Dilutive Associations Caused by ASH's Accused Products 310. Consumers of shoes like those at issue here are not likely to exercise great care in resolving likely confusion in their initial product interest, at the point of purchase, or in post-sale exposure. Even more sophisticated consumers are likely to experience cognitive dissonance regarding the source, affiliation, sponsorship, or association of ASH's Accused Products when confronted with promotions and sales of ASH's Accused Products. 311. In the post-sale context, where actual or potential consumers of shoes may only see ASH's Accused Products on someone's feet in passing, consumers are especially likely to mistake the source, affiliation, or sponsorship of ASH's Accused Products with Converse and/or the Asserted Trademarks, or to associate the Accused Products with Converse and/or the Asserted Trademarks. f. ASH's Accused Products Are Likely to Cause Confusion and Dilutive Associations 312. Due to the overwhelming similarities between ASH's Accused Products and the Converse Midsole Trademark, and for the reasons set forth above, there is (a) a likelihood of 90 confusion between ASH or its Accused Products, and Converse or the Converse Midsole Trademark, and/or (b) a likelihood of dilution. 0. Hitch Enterprises Pty Ltd. d/b/a Skeanie 313. On information and belief, Respondent Hitch Enterprises Pty Ltd., d/b/a Skeanie ("Skeanie"), is an Australian corporation with its principal place of business located at Unit 3, 13 Lyell Street, Mittagong, New South Wales 2575, Australia. See Contact, Skeanie, http://www.skeanie.corn.au/view/contact-skeanie-uh-oh/17 (last visited Sept. 25, 2014), Exhibit 104. 1. Skeanie's Accused Products 314. Skeanie's Accused Products include at least its "Canvas Gym Boot" footwear products and colorable imitations thereof Representative images ofSkeanie's Accused Products are attached as Exhibit 105. 315. On information and belief, Skeanie has promoted and sold additional shoe models bearing the Converse Midsole Trademark under various names and style descriptions. 316. On information and belief, in addition to the Accused Products, Skeanie 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. See Junior Range, Skeanie, http://www.skeanie.com.au/shop/skeanie-shoes/junior-walker-range-1-5- years/1503?rf=&viewby=list (last visited Sept. 1, 2014), Exhibit 106. 2. Skeanie's Unfair Acts, Infringement, and Dilution of the Converse Midsole Trademark and the Converse Outsole Trademark 317. On information and belief, Skeanie manufactures, imports into the United States, promotes, distributes, and/or sells after importation in the United States Skeanie's Accused 91 Products shown below that infringe and/or are likely to dilute one or more of the Asserted Trademarks. a. Converse Owned Protectable and Famous Trademark Rights Before Skeanie Promoted and Sold Accused Products 318. As a result of Converse's near century of substantially exclusive use of the Asserted Trademarks, substantial promotion and sales of products bearing the Asserted Trademarks, and widespread unsolicited publicity and copying of the Asserted Trademarks, as set forth above, Converse owned highly distinctive, well-recognized, and famous trademark rights in the Asserted Trademarks before Skeanie promoted and sold Accused Products. 319. Each ofthe Asserted Trademarks relevant to Skeanie's violations is also the subject of duly issued United States Trademark Registrations. b. Skeanie's Accused Products Are Virtually Identical to the Converse Midsole Trademark and the Converse Outsole Trademark 320. As shown in Figure 34 below, Skeanie's Accused Products bear designs that are nearly identical to the Converse Midsole Trademark and the Converse Outsole Trademark. 92 FIGURE 34: Representative Images of Skeanie's Accused Products and the Converse Asserted Trademarks Representative Converse Accused Product Converse Asserted Trademark Shoe Canvas Gym Boot Canvas Gym Boot c. Skeanie Intended to Copy the Converse Midsole Trademark and the Converse Outsole Trademark and to Infringe and Dilute the Converse Midsole Trademark and the Converse Outsole Trademark 321. Skeanie's intent to create associations with Converse and to free ride on Converse's goodwill is evident in the close similarities between Skeanie's Accused Products on the one hand, and the Converse Midsole Trademark and Converse Outsole Trademark on the other hand. On information and belief, the overwhelming similarities are due to Skeanie's intentional copying. 93 d. Skeanie Promotes and Sells Accused Products in Competition With Converse's Promotion and Sales of Products Bearing the Asserted Trademarks 322. On information and belief, Skeanie promotes and sells its Accused Products in retail stores in the United States and on the Internet. See Canvas Gym Boot, Skeanie, http://www.stryde.corn.au/canvas-gym-boot-red-skeanie.html (last visited Sept. 1, 2014), Exhibit 107. For example, on information and belief, Skeanie sells Accused Products at BabyBootique.com, Stryde.com, and Notanotherbabyshop.com. 323. On information and belief, Skeanie's Accused Products have been promoted and sold at approximately $19.95 (AUD) (corresponds to approximately $17.50 (USD)). See Exhibit 23. 324. On information and belief, Skeanie promotes and sells its Accused Products as casual or lifestyle shoe designs primarily to young girls and boys. e. Relevant Consumers Are Susceptible to Confusion and Dilutive Associations Caused by Skeanie's Accused Products 325. Consumers of shoes like those at issue here are not likely to exercise great care in resolving likely confusion in their initial product interest, at the point of purchase, or in post-sale exposure. Even more sophisticated consumers are likely to experience cognitive dissonance regarding the source, affiliation, sponsorship, or association ofSkeanie's Accused Products when confronted with promotions and sales of Skeanie 's Accused Products. 326. In the post-sale context, where actual or potential consumers of shoes may only see Skeanie's Accused Products on someone's feet in passing, consumers are especially likely to mistake the source, affiliation, or sponsorship ofSkeanie's Accused Products with Converse and/or the Asserted Trademarks, or to associate the Accused Products with Converse and/or the Asserted Trademarks. 94 f. Skeanie's Accused Products Are Likely to Cause Confusion and Dilutive Associations 327. Due to the overwhelming similarities between Skeanie's Accused Products and the Converse Midsole and Outsole Trademarks, and for the reasons set forth above, there is (a) a likelihood of confusion between Skeanie or its Accused Products, and Converse, the Converse Midsole Trademark, and/or the Converse Outsole Trademark, and/or (b) a likelihood of dilution. P. Iconix Brand Group, Inc., d/b/a Ed Hardy 328. On information and belief, Respondent Iconix Brand Group, Inc., d/b/a Ed Hardy ("Ed Hardy''), is a Delaware corporation with its principal place of business located at 1450 Broadway, 3rd Floor and 4th Floor, New York, New York 10018. See Contact, Iconix, http://www.iconixbrand.com/contact.asp (last visited Jul. 27, 2014), Exhibit 108; see also NYS Department of State Division of Corporations Entity Information for Iconix Brand Group, Inc., Exhibit 109. 1. Ed Hardy's Background 329. On information and belief, Ed Hardy is a retired tattoo artist who licenses rights to his imagery. Margot Mifflin, Hate the Brand, Love the Man: Why Ed Hardy Matters, The Los Angeles Review ofBooks (Aug. 25, 2013), available at http://lareviewofbooks.org/review/hate- the-brand-love-the-man-why-ed-hardy-matters, Exhibit 110. On information and belief, Iconix Brand Group purchased worldwide rights to the Ed Hardy brand in 2011, and the Ed Hardy brand now sells apparel, shoes, and accessories. 330. On information and belief, Ed Hardy first started selling shoes like those accused of infringement in this action in limited quantities and geographic areas around 2007. 331. On August 9, 2008, Converse sent Ed Hardy a cease and desist letter demanding that Ed Hardy stop using the trademarks covered by Converse's '960 and '1 03 Registrations and 95 to avoid the "Converse look." On information and belief, Ed Hardy stopped using the Converse Outsole Trademark, but continued using the Converse Midsole Trademark. 2. Ed Hardy's Accused Products 332. Ed Hardy's Accused Products include at least its "Men's Dakota" footwear products and colorable imitations thereof Representative images of Ed Hardy's Accused Products are attached as Exhibit 111. 333. On information and belief, Ed Hardy has promoted and sold additional shoe models bearing the Converse Midsole Trademark under various names and style descriptions, but in small quantities with limited distribution. 334. On information and belief, in addition to the Accused Products, Ed Hardy 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. See Ed Hardy Shoes, Macy' s, http://wwwl.macys.com/cms/slp/2/Ed-Hardy-Shoes (last visited Aug. 29, 2014), Exhibit 112 (excerpt from website). 3. Ed Hardy's Unfair Acts, Infringement, and Dilution ofthe Converse Midsole Trademark 335. On information and belief, Ed Hardy manufactures, imports into the United States, promotes, distributes, and/or sells after importation in the United States Ed Hardy's Accused Products shown below that infringe and/or are likely to dilute the Converse Midsole Trademark. a. Converse Owned Protectable and Famous Trademark Rights Before Ed Hardy Promoted and Sold Accused Products 336. As a result of Converse's near century of substantially exclusive use ofthe Asserted Trademarks, substantial promotion and sales of products bearing the Asserted 96 Trademarks, and widespread unsolicited publicity and copying of the Asserted Trademarks, as set forth above, Converse owned highly distinctive, well-recognized, and famous trademark rights in the Asserted Trademarks before Ed Hardy promoted and sold Accused Products. 337. The Asserted Trademark relevant to Ed Hardy's violations is also the subject of a duly issued United States Trademark Registration. b. Ed Hardy's Accused Products Are Virtually Identical to the Converse Midsole Trademark 338. As shown in Figure 35 below, Ed Hardy's Accused Products bear designs that are nearly identical to the Converse Midsole Trademark. FIGURE 35: Representative Images of Ed Hardy's Accused Products and the Converse Asserted Trademark Representative Accused Product Converse Asserted Trademark Converse Shoe Men's Dakota c. Ed Hardy Intended to Copy the Converse Midsole Trademark and to Infringe and Dilute the Converse Midsole Trademark 339. Ed Hardy's intent to create associations with Converse and to free ride on Converse's goodwill is evident in the close similarities between Ed Hardy's Accused Products on the one hand, and the Converse Midsole Trademark on the other hand. On information and belief, the overwhelming similarities are due to Ed Hardy's intentional copying. 97 d. Ed Hardy Promotes and Sells Accused Products in Competition With Converse's Promotion and Sales of Products Bearing the Asserted Trademarks 340. On information and belief, Ed Hardy promotes and sells its Accused Products at retail stores in the United States and on the Internet. See Ed Hardy Sneakers Shoes & Boots, Designer Imports, http://www .designersimports.com/cat-ed_ hardy-shoes_boots- sneakers.htm?gclid=Cibdk7Daur4CFe070godoAIAjQ (last visited Aug. 29, 2014), Exhibit 113. For example, on information and belief, Ed Hardy sells Accused Products at DSW retail stores, Overstock.com, and Designerimports.com. 341. On information and belief, Ed Hardy's Accused Products have been promoted and sold at approximately $44. See Exhibit 23. 342. On information and belief, Ed Hardy promotes and sells its Accused Products as casual or lifestyle shoe designs primarily to adult men and women. e. Relevant Consumers Are Susceptible to Confusion and Dilutive Associations Caused by Ed Hardy's Accused Products 343. Consumers of shoes like those at issue here are not likely to exercise great care in resolving likely confusion in their initial product interest, at the point of purchase, or in post-sale exposure. Even more sophisticated consumers are likely to experience cognitive dissonance regarding the source, affiliation, sponsorship, or association ofEd Hardy's Accused Products when confronted with promotions and sales of Ed Hardy's Accused Products. 344. In the post-sale context, where actual or potential consumers of shoes may only see Ed Hardy's Accused Products on someone's feet in passing, consumers are especially likely to mistake the source, affiliation, or sponsorship of Ed Hardy's Accused Products with Converse and/or the Asserted Trademarks, or to associate the Accused Products with Converse and/or the Asserted Trademarks. 98 f. Ed Hardy's Accused Products Are Likely to Cause Confusion and Dilutive Associations 345. Due to the overwhelming similarities between Ed Hardy's Accused Products and the Converse Midsole Trademark, and for the reasons set forth above, there is (a) a likelihood of confusion between Ed Hardy or its Accused Products, and Converse or the Converse Midsole Trademark, and/or (b) a likelihood of dilution. 346. On information and belief, Ed Hardy intended to create associations with Converse when it copied the Converse Midsole Trademark. Indeed, Ed Hardy's Accused Products have given rise to unwanted and unauthorized associations with Converse. See Tonya Brisnehan, Highrise Ed Hardy Women's Shoes- "Chucks" of the High Fashion World, Ezine Articles (Dec. 6, 2008), http://ezinearticles.com/?Highrise- Ed-Hardy-Womens-Shoes---Chucks- of-the-High-Fashion-World&id=1764725, Exhibit 114, at 1 (annotated); Ed Hardy Men's Highrise Sneaker, Amazon, http://www.amazon.com/Ed-Hardy-Mens-Highrise- Sneaker/dp/B001P06F12 (last visited Aug. 30, 2014), Exhibit 115, at 2 (annotated). Q. Kmart Corporation 347. On information and belief, Respondent Kmart Corporation ("Kmart") is an Illinois corporation and a wholly owned subsidiary of Sears Holdings Corporation, with its principal place ofbusiness located at 3333 Beverly Road, Hoffinan Estates, IL 60179. See About Kmart, Sears Holding Corporation, http://www.searsholdings.com/about/kmart// (last visited Sept. 29, 2014) and Our Location, Sears Holding Corporation, http://www.searsholdings.com/about/loc.htm (last visited Sept. 29, 2014), Compilation Exhibit 116; see also Illinois Secretary of State Corporation File Detail Report for Kmart, Exhibit 117. 99 1. Kmart's Background 348. Kmart is a mass merchandising company that sells products ranging from automotive products to sports equipment to clothing and footwear. See Compilation Exhibit 116. 349. At least one commentator observed that "companies like Kmart and [its house brand] Joe Boxer are like sharks waiting in the water to bite on innovative designs created by smaller fish in the sea." See Kmart and Joe Boxer not Innovative, Steals BadTuna Logo, BadTuna.com, http://www.badtuna.com/alert.htm (last visited Aug. 29, 2014), Exhibit 118. 350. In commenting on Kmart's Joe Boxer shoes, consumers have observed: • "I've gotten lots of compliments [on the Joe Boxer shoes], and/ do like how they're like getting Chuck Taylor's for a steal .... I would defmitely recommend [the Accused Product] to a friend. Ifyou like Chuck Taylor's but don't like the price, don't look for a sale ... , come on by Kmart and have some savings!" • "My kids love converse & they seen these [Accused Product] & loved them!" Consumer Review, MyGofer, http://www.mygofer.com/joe-boxer-women-39-s-soren-canvas- sneaker-black/p-035B447000420001P (last visited Sept. 22, 2014), Compilation Exhibit 119 at 2 (emphasis added); Customer Review, Kmart, http://www.kmart.com/joe-boxer-boy-s-recap- black-white-high-top-casual/p-035VA74268612P?prdNo=45&blockNo=45&blockType=G45 (last visited Sept. 24, 2014), Compilation Exhibit 119 at 5 (emphasis added). 2. Kmart's Accused Products 351. Kmart's Accused Products include at least its "Joe Boxer" footwear products and colorable imitations thereof Images ofKmart's Accused Products are attached as Exhibit 120. 352. On information and belief, Kmart has promoted and sold additional shoe models bearing the Converse Midsole Trademark under various names and style descriptions. 100 353. On information and belief, in addition to the Accused Products, Kmart 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. See Clothing, Shoes & Jewelry, Kmart, http://www.kmart.com/clothing-shoes-jewelry-shoes/b-1325067478 (last visited Aug. 29, 2014), Exhibit 121. 3. Kmart's Unfair Acts, Infringement, and Dilution of the Converse Midsole Trademark 354. On information and belief, Kmart manufactures, imports into the United States, promotes, distributes, and/or sells after importation in the United States Kmart's Accused Products shown below that infringe and/or are likely to dilute the Converse Midsole Trademark. a. Converse Owned Protectable and Famous Trademark Rights Before Kmart Promoted and Sold Accused Products 355. As a result of Converse's near century of substantially exclusive use ofthe Asserted Trademarks, substantial promotion and sales of products bearing the Asserted Trademarks, widespread unsolicited publicity, and attempts to copy the Asserted Trademarks by others, as set forth above, Converse owned highly distinctive, well-recognized, and famous trademark rights in the Asserted Trademarks before Kmart promoted and sold Accused Products. 356. The Asserted Trademark relevant to Kmart's violations is also the subject of a duly issued United States Trademark Registration. b. Kmart's Accused Products Are Virtually Identical to the Converse Midsole Trademark 357. As shown in Figure 36 below, Kmart's Accused Products bear designs that are nearly identical to the Converse Midsole Trademark. 101 FIGURE 36: Representative Images of Kmart's Accused Products and the Converse Asserted Trademark Representative Converse Accused Product Converse Asserted Trademark Shoe Joe Boxer Low Joe Boxer High c. Kmart Intended to Copy the Converse Midsole Trademark and to Infringe and Dilute the Converse Midsole Trademark 358. Kmart's intent to create associations with Converse and to free ride on Converse's goodwill is evident in the close similarities between Kmart's Accused Products on the one hand, and the Converse Midsole Trademark on the other hand. On information and belief, the overwhelming similarities are due to Kmart's intentional copying. d. Kmart Promotes and Sells Accused Products in Competition With Converse's Promotion and Sales of Products Bearing the Asserted Trademarks 359. On information and belief, Kmart promotes and sells its Accused Products at its retail stores in the United States and on the Internet. See Joe boxer Women's Soren Canvas 102 Sneaker, Kmart, http://www.kmart.com/joe-boxer-women-39-s-soren-canvas-sneaker-black/p- 035B447000420001P?prdNo=4&blockNo=4&blockType=G4&sid=KAx20061023x272xTier3& aff=Y &PID=2687457&AID=l0660381&redirectType=SRDT (last visited Sept. 1, 2014), Exhibit 122. 360. On information and belief, Kmart's Accused Products in the boys' model have been promoted and sold for approximately $5.60. See Exhibit 23. 361. On information and belief, Kmart promotes and sells its Accused Products as casual or lifestyle shoe designs primarily to pre-teen and teen boys and girls. e. Relevant Consumers Are Susceptible to Confusion and Dilutive Associations Caused by Kmart's Accused Products 362. Consumers of shoes like those at issue here are not likely to exercise great care in resolving likely confusion in their initial product interest, at the point of purchase, or in post-sale exposure. Even more sophisticated consumers are likely to experience cognitive dissonance regarding the source, affiliation, sponsorship, or association ofKmart's Accused Products when confronted with promotions and sales ofKmart's Accused Products. 363. In the post-sale context, where actual or potential consumers of shoes may only see Kmart's Accused Products on someone's feet in passing, consumers are especially likely to mistake the source, affiliation, or sponsorship ofKmart's Accused Products with Converse and/or the Asserted Trademarks, or to associate the Accused Products with Converse and/or the Asserted Trademarks. f. Kmart's Accused Products Are Likely to Cause Confusion and Dilutive Associations 364. Due to the overwhelming similarities between Kmart's Accused Products and the Converse Midsole Trademark, and for the reasons set forth above, there is (a) a likelihood of 103 EXHIBIT 2 cont. confusion between Kmart or its Accused Products, and Converse or the Converse Midsole Trademark, and/or (b) a likelihood of dilution. 365. On information and belief, Kmart intended to create associations with Converse when it copied the Converse Midsole Trademark. Indeed, Kmart's Accused Products have given rise to unwanted and unauthorized associations between its products and Converse. See Exhibit 119 (annotated). R. Mamiye Imports LLC d/b/a Lilly of New York 366. On information and belief, Respondent Mamiye Imports LLC, d/b/a Lilly ofNew York ("Lilly New York"), is a New York corporation with its principal place of business located at 1841 East 8th Street, Brooklyn, NY 11223. See Dun & Bradstreet Business Background Report for Mamiye Imports LLC (last updated Jun. 13, 2014), Exhibit 123; see also NYS Department of State Division of Corporations Entity Information for Mamiye Imports LLC, Exhibit 124. On information and belief, Lilly ofNew York is related to or affiliated with Edamame. 1. Lilly New York's Accused Products 367. Lilly New York's Accused Products include at least its "Canvas Old School" footwear products and colorable imitations thereof. Representative images of Lilly New York's Accused Products are attached as Exhibit 125. 368. On information and belief, Lilly New York has promoted and sold additional shoe models bearing the Converse Midsole Trademark under various names and style descriptions. 369. A wide variety of shoe designs that do not include the designs of its Accused Products and that do not violate the Asserted Trademarks are available to Lilly New York. 104 2. Lilly New York's Unfair Acts, Infringement, and Dilution of the Converse Midsole Trademark and the Converse Outsole Trademark 370. On information and belief, Lilly New York manufactures, imports into the United States, promotes, distributes, and/or sells after importation in the United States Lilly New York's Accused Products shown below that infringe and/or are likely to dilute one or more of the Asserted Trademarks. a. Converse Owned Protectable and Famous Trademark Rights Before Lilly New York Promoted and Sold Accused Products 371. As a result of Converse's near century of substantially exclusive use ofthe Asserted Trademarks, substantial promotion and sales of products bearing the Asserted Trademarks, widespread unsolicited publicity, and attempts to copy the Asserted Trademarks by others, as set forth above, Converse owned highly distinctive, well-recognized, and famous trademark rights in the Asserted Trademarks before Lilly New York promoted and sold Accused Products. 372. Each ofthe Asserted Trademarks relevant to Lilly New York's violations is also the subject of duly issued United States Trademark Registrations. b. Lilly New York's Accused Products Are Virtually Identical to the Converse Midsole Trademark and the Converse Outsole Trademark 373. As shown in Figure 37 below, Lilly New York's Accused Products bear designs that are nearly identical to the Converse Midsole Trademark and the Converse Outsole Trademark. 105 FIGURE 37: Representative Images of Lilly New York's Accused Products and the Converse Asserted Trademarks Representative Converse Accused Product Converse Asserted Trademark Shoe Canvas Old School Canvas Old School Canvas Old School . ｾＧ＠ ' .'/-f/' ﾷ ﾷ ﾷ ﾷﾷ ﾷ ﾷﾷ ﾷﾷﾷｾ ＺＺ ＺＺＺＺＺﾷﾷ＠ .. /1/ /,/. ｾｾ＠ ) ) ｾ ＺＺＺＺＺＺＢ＾ＭＧ＠ Canvas Old School .. 106 c. Lilly New York Intended to Copy the Converse Midsole Trademark and the Converse Outsole Trademark and to Infringe and Dilute the Converse Midsole Trademark and the Converse Outsole Trademark 374. Lilly New York's intent to create associations with Converse and to free ride on Converse's goodwill is evident in the close similarities between Lilly New York's Accused Products on the one hand, and the Converse Midsole Trademark and the Converse Outsole Trademark on the other hand. On information and belief, the overwhelming similarities are due to Lilly New York's intentional copying. d. Lilly New York Promotes and Sells Accused Products in Competition With Converse's Promotion and Sales of Products Bearing the Asserted Trademarks 3 75. On information and belief, Lilly New York promotes and sells its Accused Products at retail stores in the United States and on the Internet. See Lilly New York, Styles 44, http://www.styles44.com/kids/lilly-of-new-york.html (last visited Jun. 13, 2014), Exhibit 126. For example, Lilly New York sells Accused Products at Style44.com and Zulily.com. 376. On information and belief, Lilly New York's Accused Products have been promoted and sold at approximately $7. See Exhibit 23. 3 77. On information and belief, Lilly New York promotes and sells its Accused Products as casual or lifestyle shoe designs primarily to young girls. e. Relevant Consumers Are Susceptible to Confusion and Dilutive Associations Caused by Lilly New York's Accused Products 378. Consumers of shoes like those at issue here are not likely to exercise great care in resolving likely confusion in their initial product interest, at the point of purchase, or in post-sale exposure. Even more sophisticated consumers are likely to experience cognitive dissonance regarding the source, affiliation, sponsorship, or association of Lilly New York's Accused Products when confronted with promotions and sales of Lilly New York's Accused Products. 107 379. In the post-sale context, where actual or potential consumers of shoes may only see Lilly New York's Accused Products on someone's feet in passing, consumers are especially likely to mistake the source, affiliation, or sponsorship of Lilly New York's Accused Products with Converse and/ or the Asserted Trademarks, or to associate the Accused Products with Converse and/or the Asserted Trademarks. f. Lilly New York's Accused Products Are Likely to Cause Confusion and Dilutive Associations 380. Due to the overwhelming similarities between Lilly New York's Accused Products and the Converse Midsole and Outsole Trademarks, and for the reasons set forth above, there is (a) a likelihood of confusion between Lilly New York or its Accused Products, and Converse, the Converse Midsole Trademark, and/or the Converse Outsole Trademark, and/or (b) a likelihood of dilution. S. Nowhere Co. Ltd. d/b/a Bape 381. On information and belief, Respondent Nowhere Co. Ltd., d/b/a Bape ("Bape"), is a Japanese corporation with its principal place ofbusiness located at 4-22-3, Sendagaya, Shibuya-Ku 151-0051, Tokyo, Japan, and a location at 91 Greene Street, New York, NY 10012. See Hoovers Profile Report for Nowhere Co. Ltd., Exhibit 127; Locations, Bape, http://us.bape.com/pages/location (last visited Oct. 2, 2014), Exhibit 128. 1. Bape's Background 382. Bape, an abbreviation of"A Bathing Ape," is a Japanese clothing company that specializes in urban street wear. At least one commentator has pointed to Bape's knockoff of other shoe designs, questioning "has BAPE ever had an original shoe pattern? It's always Converse and Nike ripoffs ... now Vans too apparently." Bape Camouflage Vans RipoffAttempt Falls Short, Military Centric (May 16, 2013), available at 108 http://www .milcentric.com/20 13/05/16/bape-camouflage-vans-ripoff-attempt-falls-short/, Exhibit 129. 2. Bape's Accused Products 383. Bape's Accused Products include at least its "ABC Camo ApeSta" footwear products and colorable imitations thereof Representative images ofBape's Accused Products are attached as Exhibit 130. 384. On information and belief, Bape has promoted and sold additional shoe models bearing the Converse Midsole Trademark under various names and style descriptions. 385. On information and belief, in addition to the Accused Products, Bape 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. See Collections, Bape, http://us.bape.com/collections/types?q=SHOES (last visited Aug. 31, 2014); Exhibit 131. 3. Bape's Unfair Acts, Infringement, and Dilution of the Converse Midsole Trademark 386. On information and belief, Bape manufactures, imports into the United States, promotes, distributes, and/or sells after importation in the United States Bape's Accused Products shown below that infringe and/or are likely to dilute the Converse Midsole Trademark. a. Converse Owned Protectable and Famous Trademark Rights Before Bape Promoted and Sold Accused Products 387. As a result of Converse's near century of substantially exclusive use of the Asserted Trademarks, substantial promotion and sales ofproducts bearing the Asserted Trademarks, widespread unsolicited publicity, and attempts to copy the Asserted Trademarks by others, as set forth above, Converse owned highly distinctive, well-recognized, and famous trademark rights in the Asserted Trademarks before Bape promoted and sold Accused Products. 109 388. The Asse11ed Trademark relevant to Bape's violations is also the subject of a duly issued United States Trademark Registration. b. Bape's Accused Products Are Virtually Identical to the Converse Midsole Trademark 389. As shown in Figure 38 below, Bape's Accused Products bear designs that are nearly identical to the Converse Midsole Trademark. FIGURE 38: Representative Images of Bape's Accused Products and the Converse Asserted Trademark Representative Accused Product Converse Asserted Trademark Converse Shoe ABC Camo ApeSta c. Bape Intended to Copy the Converse Midsole Trademark and to Infringe and Dilute the Converse Midsole Trademark 390. Bape's intent to create associations with Converse and to free ride on Converse's goodwill is evident in the close similarities between Bape's Accused Products on the one hand, and the Converse Midsole Trademark on the other hand. On information and belief, the overwhelming similarities are due to Bape's intentional copying. d. Bape Promotes and Sells Accused Products in Competition With Converse's Promotion and Sales of Products Bearing the Asserted Trademarks 391. On information and belief, Bape promotes and sells its Accused Products at its retail stores in the United States and on the Internet. See ABC Canvas APE STA Low, Bape, 110 http://us. bape.com/blogs/news/14091541-abc-canvas-ape-sta-low (last visited Oct. 1, 2014), Exhibit 132. 392. On information and belief, Bape's Accused Products have been promoted and sold at approximately $208. See Exhibit 23. 393. On information and belief, Bape promotes and sells its Accused Products as casual or lifestyle shoe designs primarily to adult men and women. e. Relevant Consumers Are Susceptible to Confusion and Dilutive Associations Caused by Bape's Accused Products 394. Consumers of shoes like those at issue here are not likely to exercise great care in resolving likely confusion in their initial product interest, at the point of purchase, or in post-sale exposure. Even more sophisticated consumers are likely to experience cognitive dissonance regarding the source, affiliation, sponsorship, or association ofBape's Accused Products when confronted with promotions and sales ofBape's Accused Products. 395. In the post-sale context, where actual or potential consumers of shoes may only see Bape's Accused Products on someone's feet in passing, consumers are especially likely to mistake the source, affiliation, or sponsorship ofBape's Accused Products with Converse and/or the Asserted Trademarks, or to associate the Accused Products with Converse and/or the Asserted Trademarks. f. Bape's Accused Products Are Likely to Cause Confusion and Dilutive Associations 396. Due to the overwhelming similarities between Bape's Accused Products and the Converse Midsole Trademark, and for the reasons set forth above, there is (a) a likelihood of confusion between Bape or its Accused Products, and Converse or the Converse Midsole Trademark, and/or (b) a likelihood of dilution. Ill 397. On information and belief, Bape intended to create associations with Converse when it copied the Converse Midsole Trademark. Indeed, Bape's Accused Products have given rise to unwanted and unauthorized associations with Converse. See Going Bape, Status (Apr. 27, 2010), http://statusmagonline.com/bape-surnrner-2010-looks-like-chuck-taylors/, Compilation Exhibit 133 at 1 (annotated); Highsnobiety (Jul. 14, 2011), http://www.highsnobiety.com/2011/07/14/ursus-bape-canvas-hi-top-sneakers/ursus-bape-chuck- taylor-sneakers/ (last visited Aug. 31, 2014 ), Compilation Exhibit 133 at 6 (annotated). T. OPPO Original Corp. 398. On information and belief, Respondent OPPO Original Corp. ("OPPO") is a California corporation with its principal place of business located at 108-118 Brea Canyon Road, City oflndustry, CA 91789. See Dun & Bradstreet Business Directory for OPPO, http://www.dandb.com/businessdirectory/oppooriginalcorp-walnut-ca-17785944.htrnl (last visited Mar. 11, 2014), Exhibit 134; see also California Secretary of State Business Entity Detail for OPPO Original Corp., Exhibit 135. 1. OPPO's Background 399. OPPO is a shoe and boots manufacturer located in the City oflndustry region of California. See Exhibit 134. 400. On February 7, 2012, Converse sent a cease and desist letter to OPPO demanding that it stop violating the Converse Midsole Trademark. OPPO refused to enter into a settlement agreement. On information and belief, OPPO continued selling Accused Products. 112 2. OPPO's Accused Products 401. OPPO's Accused Products include at least its "Neo" footwear products and colorable imitations thereof Representative images ofOPPO's Accused Products are attached as Exhibit 136. 402. On information and belief, OPPO has promoted and sold additional shoe models bearing the Converse Midsole Trademark under various names and style descriptions. 403. On information and belief, in addition to the Accused Products, OPPO 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. See OPPO, Sears, http://www. sears.com/search=oppo %20shoes?storeld= 1015 3 &catalogld= 12605&viewItems=50&levels=Clothing%2C+Shoes+%26+ Jewelry_ Shoes_ Women %27s+Shoes&vDropDown=defaultOpt&sLevel=O&redirectType=SKIP_ LEVEL&prop 17=oppo %20shoes (last visited Aug. 31, 2014), Exhibit 137. 3. OPPO's Unfair Acts, Infringement, and Dilution of the Converse Midsole Trademark 404. On information and belief, OPPO manufactures, imports into the United States, promotes, distributes, and/or sells after importation in the United States OPPO's Accused Products shown below that infringe and/or are likely to dilute the Converse Midsole Trademark. a. Converse Owned Protectable and Famous Trademark Rights Before OPPO Promoted and Sold Accused Products 405. As a result of Converse's near century of substantially exclusive use of the Asserted Trademarks, substantial promotion and sales of products bearing the Asserted Trademarks, widespread unsolicited publicity, and attempts to copy the Asserted Trademarks by others, as set forth above, Converse owned highly distinctive, well-recognized, and famous trademark rights in the Asserted Trademarks before OPPO promoted and sold Accused Products. 113 406. The Asserted Trademark relevant to OPPO's violations is also the subject of a duly issued United States Trademark Registration. b. OPPO's Accused Products Are Virtually Identical to the Converse Midsole Trademark 407. As shown in Figure 39 below, OPPO's Accused Products bear designs that are nearly identical to the Converse Midsole Trademark. FIGURE 39: Representative Images of OPPO's Accused Products and the Converse Asserted Trademark Representative Accused Product Converse Asserted Trademark Converse Shoe .. Neo c. OPPO Intended to Copy the Converse Midsole Trademark and to Infringe and Dilute the Converse Midsole Trademark 408. OPPO's intent to create associations with Converse and to :fi·ee ride on Converse's goodwill is evident in the close similarities between OPPO's Accused Products on the one hand, and the Converse Midsole Trademark on the other hand. On information and belief, the overwhelming similarities are due to OPPO's intentional copying. d. OPPO Promotes and Sells Accused Products in Competition With Converse's Promotion and Sales of Products Bearing the Asserted Trademarks 409. On information and belief, OPPO promotes and sells its Accused Products at retail stores in the United States and on the Intemet. For example, on information and belief, 114 OPPO sells Accused Products at Sears retail stores. See OPPO Neo-13, Sears, http://www.sears.com/oppo-neo-13-women-s-chuck-taylor-style/p- 000000000000000075350000000000NE0-13-ICEP?prdN o=2&blockNo=2&blockType=G2 (last visited Aug. 31, 2014), Exhibit 138. 410. On information and belief, OPPO's Accused Products have been promoted and sold at approximately $17. See Exhibit 23. 411. On information and belief, OPPO promotes and sells its Accused Products as casual or lifestyle shoe designs primarily to adult women. e. Relevant Consumers Are Susceptible to Confusion and Dilutive Associations Caused by OPPO's Accused Products 412. Consumers of shoes like those at issue here are not likely to exercise great care in resolving likely confusion in their initial product interest, at the point of purchase, or in post-sale exposure. Even more sophisticated consumers are likely to experience cognitive dissonance regarding the source, affiliation, sponsorship, or association ofOPPO's Accused Products when confronted with promotions and sales ofOPPO's Accused Products. 413. In the post-sale context, where actual or potential consumers of shoes may only see OPPO's Accused Products on someone's feet in passing, consumers are especially likely to mistake the source, affiliation, or sponsorship ofOPPO's Accused Products with Converse and/or the Asserted Trademarks, or to associate the Accused Products with Converse and/or the Asserted Trademarks. f. OPPO's Accused Products Are Likely to Cause Confusion and Dilutive Associations 414. Due to the overwhelming similarities between OPPO's Accused Products and the Converse Midsole Trademark, and for the reasons set forth above, there is (a) a likelihood of 115 confusion between OPPO or its Accused Products, and Converse or the Converse Midsole Trademark, and/or (b) a likelihood of dilution. 415. On information and belief, OPPO intended to create associations with Converse when it copied the Converse Midsole Trademark. Indeed, OPPO's Accused Products have given rise to unwanted and unauthorized associations with Converse. See OPPO Neo-13 Women's Chuck Taylor Style Hi Top Sneaker, Shop YourWay, http://www.shopyourway.com/oppo-neo- 13-womens-chuck-taylor-style-hi-top-snea/209608689 (last visited Aug. 31, 2014), Exhibit 139 at 1, 2 (annotated). U. Orange Clubwear, Inc., d/b/a Demonia Deviant 416. On information and belief, Respondent Orange Clubwear, Inc., d/b/a Demonia Deviant ("Demonia Deviant"), is a California corporation with its principal place of business located at 14726 Goldenwest Street, Suite B, Westminster, CA 92683. See Dun & Bradstreet Report for Demonia Deviant, Exhibit 140. 1. Demonia Deviant's Background 417. Demonia Deviant describes its Demonia product line as "edgy footwear for both sexes [that] caters to a wide variety of subcultures, and is offered in a variety of styles- from sandals, sneakers, and Mary Janes to creepers, Goth, and platform boots." See Demonia, Orange Clubwear, http://www.orangeclubwear.com/category-s/1872.htm (last visited Aug. 31, 2014), Exhibit 141. 2. Demonia Deviant's Accused Products 418. Demonia Deviant's Accused Products include at least its "Deviant 101" footwear products and colorable imitations thereof Representative images ofDemonia Deviant's Accused Products are attached as Exhibit 142. 116 419. On information and belief, Demonia Deviant has promoted and sold additional shoe models bearing the Converse Midsole Trademark under various names and style descriptions. 420. On information and belief, in addition to the Accused Products, Demonia Deviant 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. See Exhibit 141. 3. Demonia Deviant's Unfair Acts, Infringement, and Dilution of the Converse Midsole Trademark 421. On information and belief, Demonia Deviant manufactures, imports into the United States, promotes, distributes, and/or sells after importation in the United States Demonia Deviant's Accused Products shown below that infringe and/or are likely to dilute the Converse Midsole Trademark. a. Converse Owned Protectable and Famous Trademark Rights Before Demonia Deviant Promoted and Sold Accused Products 422. As a result of Converse's near century of substantially exclusive use of the Asserted Trademarks, substantial promotion and sales of products bearing the Asserted Trademarks, widespread unsolicited publicity, and attempts to copy the Asserted Trademarks by others, as set forth above, Converse owned highly distinctive, well-recognized, and famous trademark rights in the Asserted Trademarks before Demonia Deviant promoted and sold Accused Products. 423. The Asserted Trademark relevant to Demonia Deviant's violations is also the subject of a duly issued United States Trademark Registration. 117 b. Demonia Deviant's Accused Products Are Virtually Identical to the Converse Midsole Trademark 424. As shown in Figure 40 below, Demonia Deviant's Accused Products bear designs that are nearly identical to the Converse Midsole Trademark. FIGURE 40: Representative Images ofDemonia Deviant's Accused Products and the Converse Asserted Trademark Representative Accused Product Converse Asserted Trademark Converse Shoe Deviant 101 c. Demonia Deviant Intended to Copy the Converse Midsole Trademark and to Infringe and Dilute the Converse Midsole Trademark 425. Demonia Deviant's intent to create associations with Converse and to free ride on Converse's goodwill is evident in the close similarities between Demonia Deviant's Accused Products on the one hand, and the Converse Midsole Trademark on the other hand. On information and belief, the overwhelming similarities are due to Demonia Deviant's intentional copying. d. Demonia Deviant Promotes and Sells Accused Products in Competition With Converse's Promotion and Sales of Products Bearing the Asserted Trademarks 426. On information and belief, Demonia Deviant promotes and sells its Accused Products at retail stores in the United States and on the Internet. See Demonia Deviant-101, Sears, http://www.sears.com /demonia-deviant-1 0 1-men-s-women-s-high-tops- 118 sneakers/pOOOOOOOOOOOOOOO 12297 OOOOOOOODEVIANT 101 B WP? prdNo=12&blockNo=12&blockType=G12 (last visited Aug. 31, 2014), Exhibit 143. For example, on information and belief, Demonia Deviant sells Accused Products at Sears retail stores, Sinistersoles.com, and Rivithead.com. 427. On information and belief, Demonia Deviant's Accused Products have been promoted and sold for approximately $35. See Exhibit 23. 428. On information and belief, Demonia Deviant promotes and sells its Accused Products as casual or lifestyle shoe designs primarily to adult men and women. e. Relevant Consumers Are Susceptible to Confusion and Dilutive Associations Caused by Demonia Deviant's Accused Products 429. Consumers of shoes like those at issue here are not likely to exercise great care in resolving likely confusion in their initial product interest, at the point of purchase, or in post-sale exposure. Even more sophisticated consumers are likely to experience cognitive dissonance regarding the source, affiliation, sponsorship, or association ofDemonia Deviant's Accused Products when confronted with promotions and sales ofDemonia Deviant's Accused Products. 430. In the post-sale context, where actual or potential consumers of shoes may only see Demonia Deviant's Accused Products on someone's feet in passing, consumers are especially likely to mistake the source, affiliation, or sponsorship ofDemonia Deviant's Accused Products with Converse and/or the Asserted Trademarks, or to associate the Accused Products with Converse and/or the Asserted Trademarks. f. Demonia Deviant's Accused Products Are Likely to Cause Confusion and Dilutive Associations 431. Due to the overwhelming similarities between Demonia Deviant's Accused Products and the Converse Midsole Trademark, and for the reasons set forth above, there is (a) a 119 likelihood of confusion between Demonia Deviant or its Accused Products, and Converse or the Converse Midsole Trademark, and/or (b) a likelihood of dilution. V. Ositos Shoes, Inc., d/b/a Collection'O 432. On information and belief, Respondent Ositos Shoes, Inc., d/b/a Collection'O ("Ositos"), is a California corporation with its principal place of business located at 9605 Rush Street, South El Monte, CA 91733. See Corporation Wiki Report for Ositos, Exhibit 144; see also California Secretary of State Business Entity Detail for Ositos Shoes, Inc., Exhibit 145. 1. Ositos' Background 433. Ositos is a shoe manufacturer and retailer located in the City oflndustry region of California. See Exhibit 144. 434. On August 10, 2010, and again on February 8, 2012, Converse sent cease and desist letters to Ositos demanding, inter alia, that it stop violating the Converse Midsole Trademark. Ositos refused to enter into a settlement agreement. On information and belief, it continued selling Accused Products. 2. Ositos' Accused Products 435. Ositos' Accused Products include at least its "Men's Low Top Canvas" footwear products and colorable imitations thereof Representative images ofOsitos' Accused Products are attached as Exhibit 146. 436. On information and belief, Ositos has promoted and sold additional shoe models bearing the Converse Midsole Trademark under various names and style descriptions. 437. On information and belief, in addition to the Accused Products, 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. See Ositos, Zulily, 120 http://www.zulily.com/brand/ositos-shoes.html (last visited Aug. 31, 2014), Exhibit 147 (excerpt from website). 3. Ositos' Unfair Acts, Infringement, and Dilution of the Converse Midsole Trademark 438. On information and belief, Ositos manufactures, imports into the United States, promotes, distributes, and/or sells after importation in the United States Ositos' Accused Products shown below that infringe and/or are likely to dilute the Converse Midsole Trademark. a. Converse Owned Protectable and Famous Trademark Rights Before Ositos Promoted and Sold Accused Products 439. As a result of Converse's near century of substantially exclusive use ofthe Asserted Trademarks, substantial promotion and sales of products bearing the Asserted Trademarks, widespread unsolicited publicity, and attempts to copy the Asserted Trademarks by others, as set forth above, Converse owned highly distinctive, well-recognized, and famous trademark rights in the Asserted Trademarks before Ositos promoted and sold Accused Products. 440. The Asserted Trademark relevant to Ositos' violations is also the subject of a duly issued United States Trademark Registration. b. Ositos' Accused Products Are Virtually Identical to the Converse Midsole Trademark 441. As shown in Figure 41 below, Ositos' Accused Products bear designs that are nearly identical to the Converse Midsole Trademark. 121 FIGURE 41: Representative Image ofOsitos' Accused Products and the Converse Asserted Trademark Representative Accused Product Converse Asserted Trademark Converse Shoe ' ｾ Ｍ ｇＮＮ ＭＭ Men's Low Top Canvas c. Ositos Intended to Copy the Converse Midsole Trademark and to Infringe and Dilute the Converse Midsole Trademark 442. Ositos' intent to create associations with Converse and to free ride on Converse's goodwill is evident in the close similarities between Ositos' Accused Products on the one hand, and the Converse Midsole Trademark on the other hand. On information and belief, the overwhelming similarities are due to Ositos' intentional copying. d. Ositos Promotes and Sells Accused Products in Competition With Converse's Promotion and Sales of Products Bearing the Asserted Trademarks 443. On information and belief, Ositos promotes and sells its Accused Products at retail stores in the United States and on the Internet. See White & Red Sneaker, Zulily, http://www.zulily.com/p/white-red-classic-sneaker-5675- 9371238.html?pos=27&bid=6994&ref-=brand&ns=ns_507904330I1409617957082 (last visited Oct. 1, 2014), Exhibit 148. 444. On information and belief, Ositos' Accused Products have been promoted and sold at approximately $21, see Exhibit 23, and as low as $12, see Exhibit 148. 122 445. On information and belief, Ositos promotes and sells its Accused Products as casual or lifestyle shoe designs primarily to teen boys and girls, and adult men and women. e. Relevant Consumers Are Susceptible to Confusion and Dilutive Associations Caused by Ositos' Accused Products 446. Consumers of shoes like those at issue here are not likely to exercise great care in resolving likely confusion in their initial product interest, at the point of purchase, or in post-sale exposure. Even more sophisticated consumers are likely to experience cognitive dissonance regarding the source, affiliation, sponsorship, or association ofOsitos' Accused Products when confronted with promotions and sales ofOsitos' Accused Products. 447. In the post-sale context, where actual or potential consumers of shoes may only see Ositos' Accused Products on someone' s feet in passing, consumers are especially likely to mistake the source, affiliation, or sponsorship ofOsitos' Accused Products with Converse and/or the Asserted Trademarks, or to associate the Accused Products with Converse and/or the Asserted Trademarks. f. Ositos' Accused Products Are Likely to Cause Confusion and Dilutive Associations 448. Due to the overwhelming similarities between Ositos' Accused Products and the Converse Midsole Trademark, and for the reasons set forth above, there is (a) a likelihood of confusion between Ositos or its Accused Products, and Converse or the Converse Midsole Trademark, and/or (b) a likelihood of dilution. W. PW Shoes Inc. 449. On information and belief, Respondent PW Shoes Inc. ("PW''), is a New York corporation with its principal place of business located at 5830 Grand Avenue #3A, Maspeth, NY 11378 and 64-29 Bell Blvd, Oakland Garden, NY 11364. See Contact Us, PW Shoes, 123 http://nypwshoes.com/index.php?route=information/contact (last visited Oct. 1, 2014), Exhibit 149; see also NYS Department of State Division of Corporations Entity Information for PW, Exhibit 150. 1. PW's Background 450. PW is a footwear distributor, providing "beachy flip-flops, formal flats and everything in between." See Exhibit 149. 2. PW's Accused Products 451. PW's Accused Products include at least its "Two-Tone Shoe Canvas" footwear products and colorable imitations thereof Representative images ofPW's Accused Products are attached as Exhibit 151. 452. On information and belief, PW has promoted and sold additional shoe models bearing the Converse Midsole and Outsole Trademarks under various names and style descriptions. 453. On information and belief, in addition to the Accused Products, PW 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. See, e.g., Shoes, PW, http://nypwshoes.com/index.php? route=product/category&path=39_ 49 (last visited Aug. 31, 2014), Exhibit 152. 3. PW's Unfair Acts, Infringement, and Dilution of the Converse Midsole Trademark and the Converse Outsole Trademark 454. On information and belief, PW manufactures, imports into the United States, promotes, distributes, and/or sells after importation in the United States PW's Accused Products shown below that infringe and/or are likely to dilute one or more of the Asserted Trademarks. 124 a. Converse Owned Protectable and Famous Trademark Rights Before PW Promoted and Sold Accused Products 455. As a result of Converse's near century of substantially exclusive use of the Asserted Trademarks, substantial promotion and sales of products bearing the Asserted Trademarks, widespread unsolicited publicity, and attempts to copy the Asserted Trademarks by others, as set forth above, Converse owned highly distinctive, well-recognized, and famous trademark rights in the Asserted Trademarks before PW promoted and sold Accused Products. 456. Each of the Asserted Trademarks relevant to PW's violations is also the subject of duly issued United States Trademark Registrations. b. PW's Accused Products Are Virtually Identical to the Converse Midsole Trademark and the Converse Outsole Trademark 457. As shown in Figure 42 below, PW's Accused Products bear designs that are nearly identical to the Converse Midsole Trademark and the Converse Outsole Trademark. 125 FIGURE 42: Representative Images of PW's Accused Products and the Converse Asserted Trademarks Representative Converse Accused Product Converse Asserted Trademark Shoe Two-Tone Shoe Canvas Two-Tone Shoe Canvas c. PW Intended to Copy the Converse Midsole Trademark and the Converse Outsole Trademark and to Infringe and Dilute the Converse Midsole Trademark and the Converse Outsole Trademark 458. PW's intent to create associations with Converse and to free ride on Converse's goodwill is evident in the close similarities between PW' s Accused Products on the one hand, and the Converse Midsole Trademark and the Converse Outsole Trademark on the other hand. On information and belief, the overwhelming similarities are due to PW' s intentional copying. d. PW Promotes and Sells Accused Products in Competition With Converse's Promotion and Sales of Products Bearing the Asserted Trademarks 459. On information and belief, PW promotes and sells its Accused Products at retail stores in the United States and on the Internet. See Women's Canvas Shoes, PW, 126 http://www.nypwshoes.com/index.php? route=product/product&path=39_ 27&product_id=849 (last visited Aug. 31, 2014), Exhibit 153. 460. On information and belief, PW's Accused Products have been promoted and sold for approximately $11. See Exhibit 23. 461. On information and belief, PW promotes and sells its Accused Products as casual or lifestyle shoe designs primarily to adult women. e. Relevant Consumers Are Susceptible to Confusion and Dilutive Associations Caused by PW's Accused Products 462. Consumers of shoes like those at issue here are not likely to exercise great care in resolving likely confusion in their initial product interest, at the point of purchase, or in post-sale exposure. Even more sophisticated consumers are likely to experience cognitive dissonance regarding the source, affiliation, sponsorship, or association ofPW's Accused Products when confronted with promotions and sales ofPW's Accused Products. 463. In the post-sale context, where actual or potential consumers of shoes may only see PW's Accused Products on someone's feet in passing, consumers are especially likely to mistake the source, affiliation, or sponsorship ofPW's Accused Products with Converse and/or the Asserted Trademarks, or to associate the Accused Products with Converse and/or the Asserted Trademarks. f. PW's Accused Products Are Likely to Cause Confusion and Dilutive Associations 464. Due to the overwhelming similarities between PW's Accused Products and the Converse Midsole and Outsole Trademarks, and for the reasons set forth above, there is (a) a likelihood of confusion between PW or its Accused Products, and Converse, the Converse Midsole Trademark, and/or the Converse Outsole Trademark, and/or (b) a likelihood of dilution. 127 X. Ralph Lauren Corporation 465. On information and belief, Respondent Ralph Lauren Corporation ("Ralph Lauren"), is a Delaware corporation with its principal place of business located at 650 Madison Ave, Floor C1, New York, NY 10022. See Dun & Bradstreet Report for Ralph Lauren (last updated Aug. 28, 2012), Exhibit 154; see also NYS Department of State Division of Corporations Entity Information for Ralph Lauren Corporation, Exhibit 155. 1. Ralph Lauren's Background 466. Ralph Lauren purports to engage in the design, marketing and distribution of products, including men's, women's and children's apparel, accessories (including footwear), fragrances, and home furnishing. See Ralph Lauren Corp (RL), Reuters, http://www.reuters.com/fmance/stocks/companyProfile?symbol=RL (last visited Aug. 31, 2014), Exhibit 156. 2. Ralph Lauren's Accused Products 467. Ralph Lauren's Accused Products include at least its "Ranell" footwear products and colorable imitations thereof Representative images ofRalph Lauren's Accused Products are attached as Exhibit 157. 468. On information and belief, Ralph Lauren has promoted and sold additional shoe models bearing the Converse Midsole Trademark under various names and style descriptions. 469. On information and belief, in addition to the Accused Products, Ralph Lauren 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. See Ralph Lauren, http://www.ralphlauren.com/family/index.jsp?categoryld=24424616&view=99&cp= 1760782.18 98624&ab=ln_women_cs_denim&supplyshoes, Exhibit 158. 128 3. Ralph Lauren's Unfair Acts, Infringement, and Dilution of the Converse Midsole Trademark 470. On information and belief, Ralph Lauren manufactures, imports into the United States, promotes, distributes, and/or sells after importation in the United States Ralph Lauren's Accused Products shown below that infringe and/or are likely to dilute the Converse Midsole Trademark. a. Converse Owned Protectable and Famous Trademark Rights Before Ralph Lauren Promoted and Sold Accused Products 471. As a result of Converse's near century of substantially exclusive use of the Asserted Trademarks, substantial promotion and sales of products bearing the Asserted Trademarks, widespread unsolicited publicity, and attempts to copy the Asserted Trademarks by others, as set forth above, Converse owned highly distinctive, well-recognized, and famous trademark rights in the Asserted Trademarks before Ralph Lauren promoted and sold Accused Products. 472. The Asserted Trademark relevant to Ralph Lauren's violations is also the subject of a duly issued United States Trademark Registration. b. Ralph Lauren's Accused Products Are Virtually Identical to the Converse Midsole Trademark 473. As shown in Figure 43 below, Ralph Lauren's Accused Products bear designs that are nearly identical to the Converse Midsole Trademark. 129 FIGURE 43: Representative Image of Ralph Lauren's Accused Products and the Converse Asserted Trademark Representative Accused Product Converse Asserted Trademark Converse Shoe Ranell c. Ralph Lauren Intended to Copy the Converse Midsole Trademark and to Infringe and Dilute the Converse Midsole Trademark 474. Ralph Lauren's intent to create associations with Converse and to free ride on Converse's goodwill is evident in the close similarities between Ralph Lauren's Accused Products on the one hand, and the Converse Midsole Trademark on the other hand. On information and belief, the overwhelming similarities are due to Ralph Lauren's intentional copying. d. Ralph Lauren Promotes and Sells Accused Products in Competition With Converse's Promotion and Sales of Products Bearing the Asserted Trademarks 475. On information and belief, Ralph Lauren promotes and sells its Accused Products at its retail stores in the United States and on the Internet. See Ranell Sneaker, Ralph Lauren Website (cached), http://webcache. googleusercontent.com/search?q=cache:yNtDxLqfAJ:www.ralphlauren.com/product/index.jsp %3Fproductld%3D23745896+&cd=1&hl=en&ct=clnk&gl=us (last visited Sept. 25, 2014, from Google Cache), Exhibit 159. 130 476. On information and belief, Ralph Lauren's Accused Products have been promoted and sold at approximately $41. See Exhibit 23. 477. On information and belief, Ralph Lauren promotes and sells its Accused Products as casual or lifestyle shoe designs primarily to adult men and women. e. Relevant Consumers Are Susceptible to Confusion and Dilutive Associations Caused by Ralph Lauren's Accused Products 478. Consumers of shoes like those at issue here are not likely to exercise great care in resolving likely confusion in their initial product interest, at the point of purchase, or in post-sale exposure. Even more sophisticated consumers are likely to experience cognitive dissonance regarding the source, affiliation, sponsorship, or association of Ralph Lauren's Accused Products when confronted with promotions and sales of Ralph Lauren's Accused Products. 4 79. In the post-sale context, where actual or potential consumers of shoes may only see Ralph Lauren's Accused Products on someone' s feet in passing, consumers are especially likely to mistake the source, affiliation, or sponsorship of Ralph Lauren's Accused Products with Converse and/or the Asserted Trademarks, or to associate the Accused Products with Converse and/or the Asserted Trademarks. f. Ralph Lauren's Accused Products Are Likely to Cause Confusion and Dilutive Associations 480. Due to the overwhelming similarities between Ralph Lauren's Accused Products and the Converse Midsole Trademark, and for the reasons set forth above, there is (a) a likelihood of confusion between Ralph Lauren or its Accused Products, and Converse or the Converse Midsole Trademark, and/or (b) a likelihood of dilution. 481. On information and belief, Ralph Lauren intended to create associations with Converse when it copied the Converse Midsole Trademark. Indeed, Ralph Lauren's Accused 131 Products have given rise to unwanted and unauthorized associations with Converse. See Footware & Softgoods, Core 77, http://boards.core77.com/viewtopic.php?t=23976& (last visited Aug. 31, 2014), Exhibit 160, at 2 (annotated). Y. Shenzhen Foreversun Industrial Co., Ltd (a/k/a Shenzhen Foreversun Shoes Co., Ltd) 482. On information and belief, Respondent Shenzhen Foreversun Industrial Co., Ltd (a/k/a Shenzhen Foreversun Shoes Co., Ltd) ("Foreversun") is a Chinese company with its principal place ofbusiness located at Room 1109-1112, F11, Yousong Science & Technology Building, 1st Road ofDonghuan, Longhua Bao'an, Shenzhen City, 518109 Guangdong, China. See Contact, Foreversun, http://www.cn-foreversun.com/contact.asp (last visited Oct. 1, 2014), Exhibit 161. 1. Foreversun 's Background 483. Foreversun states that it was founded in 2001 and specializes in garments and ladies' shoes. See About Us, Foreversun, http://www.cn-foreversun.com/about.asp (last visited Oct. 1, 2014), Exhibit 162. According to its website, Foreversun's shoe factories are located in Guangdong, Fujian, and Zhejiang in China. !d. 2. Foreversun's Accused Products 484. Foreversun's Accused Products include at least its "Blue" footwear products and all colorable imitations thereof Representative images ofForeversun's Accused Products are attached as Exhibit 163. 485. On information and belief, Foreversun has promoted and sold additional shoe models bearing the Asserted Trademarks under various names and style descriptions. 486. On information and belief, in addition to the Accused Products, Foreversun promotes and sells a wide variety of shoe designs that do not include the designs of its Accused 132 Products and that do not violate the Asserted Trademarks. See Shoes, Foreversun, http://www.cn-foreversun.com/Shoes_product.asp?ListPage=5&MID=35 (last visited Oct. 8, 2014), Exhibit 164. 3. Foreversun 's Unfair Acts, Infringement, and Dilution of the Converse Midsole Trademark and the Converse Outsole Trademark 487. On information and belief, Foreversun manufactures, imports into the United States, promotes, distributes, and/or sells after importation in the United States Foreversun's Accused Products shown below that infringe and/or are likely to dilute one or more of the Asserted Trademarks. a. Converse Owned Protectable and Famous Trademark Rights Before Foreversun Promoted and Sold Accused Products 488. As a result of Converse's near century of substantially exclusive use ofthe Asserted Trademarks, substantial promotion and sales of products bearing the Asserted Trademarks, widespread unsolicited publicity, and attempts to copy the Asserted Trademarks by others, as set forth above, Converse owned highly distinctive, well-recognized, and famous trademark rights in the Asserted Trademarks before Foreversun promoted and sold Accused Products. 489. Each of the Asserted Trademarks relevant to Foreversun's violations is also the subject of duly issued United States Trademark Registrations. b. Foreversun's Accused Products Are Virtually Identical to the Converse Midsole and Outsole Trademarks 490. As shown in Figure 44 below, Foreversun's Accused Products bear designs that are nearly identical to the Converse Midsole Trademark and the Converse Outsole Trademark. 133 FIGURE 44: Representative Images ofForeversun's Accused Products and the Converse Asserted Trademarks Representative Accused Product Converse Asserted Trademark Converse Shoe Blue Blue c. Foreversun Intended to Copy the Converse Midsole Trademark and the Converse Outsole Trademark and to Infringe and Dilute the Converse Midsole Trademark and the Converse Outsole Trademark 491. Foreversun's intent to create associations with Converse and to free ride on Converse's goodwill is evident in the close similarities between Foreversun's Accused Products on the one hand, and the Converse Midsole Trademark and the Converse Outsole Trademark on the other hand. d. Foreversun Promotes and Sells Accused Products in Competition With Converse's Promotion and Sales of Products Bearing the Asserted Trademarks 492. On information and belief, Foreversun promotes and sells its Accused Products at retail stores in the United States and on the Internet. See Shoes, Foreversun, http://www.cn- 134 foreversun.com/Shoes_product.asp?MID=35&NID=481 (last visited Aug. 31, 2014), Exhibit 165 (image of an exemplary shoe on Foreversun's website). 493. On information and belief, Foreversunpromotes and sells its Accused Products as casual or lifestyle shoe designs primarily to adult women. e. Relevant Consumers Are Susceptible to Confusion and Dilutive Associations Caused by Foreversun's Accused Products 494. Consumers of shoes like those at issue here are not likely to exercise great care in resolving likely confusion in their initial product interest, at the point of purchase, or in post-sale exposure. Even more sophisticated consumers are likely to experience cognitive dissonance regarding the source, affiliation, sponsorship, or association ofForeversun's Accused Products when confronted with promotions and sales of Foreversun' s Accused Products. 495. In the post-sale context, where actual or potential consumers of shoes may only see Foreversun's Accused Products on someone's feet in passing, consumers are especially likely to mistake the source, affiliation, or sponsorship ofForeversun's Accused Products with Converse and/or the Asserted Trademarks, or to associate the Accused Products with Converse and/or the Asserted Trademarks. f. Foreversun's Accused Products Are Likely to Cause Confusion and Dilutive Associations 496. Due to the overwhelming similarities between Foreversun's Accused Products and the Converse Midsole and Outsole Trademarks, and for the reasons set forth above, there is (a) a likelihood of confusion between Foreversun or its Accused Products, and Converse, the Converse Midsole Trademark, and/or the Converse Outsole Trademark, and/or (b) a likelihood of dilution. 135 Z. Shoe Shox 497. On information and belief, Respondent Shoe Shox ("Shoe Shox") is a d/b/a for one or more foreign factories and/or importers selling Accused Products through online shoe shopping sites, primarily Zulily, Inc., at zulily.com ("Zulily"). On information and belief, Shoe Shox can be contacted through Zulily, which is located at 2601 First Avenue South, Seattle, WA 98134. See Washington Secretary of State Corporations Division Data for Zulily, Exhibit 166; Hoovers Profile for Zulily, Exhibit 167. 1. Shoe Shox's Accused Products 498. Shoe Shox's Accused Products include at least its ''Navy Sneaker" footwear products and all colorable imitations thereof Representative images of Shoe Shox's Accused Products are attached as Exhibit 168. 499. On information and belief, Shoe Shox has promoted and sold additional shoe models bearing the Converse Midsole Trademark under various names and style descriptions. 500. A wide variety of shoe designs that do not include the designs of its Accused Products and that do not violate the Asserted Trademarks are available to Shoe Shox. 2. Shoe Shox's Unfair Acts, Infringement, and Dilution of the Converse Midsole Trademark and the Converse Outsole Trademark 501. On information and belief, Shoe Shox manufactures, imports into the United States, promotes, distributes, and/or sells after importation in the United States Shoe Shox's Accused Products shown below that infringe and/or are likely to dilute one or more of the Asserted Trademarks. a. Converse Owned Protectable and Famous Trademark Rights Before Shoe Shox Promoted and Sold Accused Products 502. As a result of Converse's near century of substantially exclusive use of the Asserted Trademarks, substantial promotion and sales of products bearing the Asserted 136 Trademarks, widespread unsolicited publicity, and attempts to copy the Asserted Trademarks by others, as set forth above, Converse owned highly distinctive, well-recognized, and famous trademark rights in the Asserted Trademarks before Shoe Shox promoted and sold Accused Products. 503. Each of the Asserted Trademarks relevant to Shoe Shox's violations is also the subject of duly issued United States Trademark Registrations. b. Shoe Shox's Accused Products Are Virtually Identical to the Converse Midsole Trademark and the Converse Outsole Trademark 504. As shown in Figure 45 below, Shoe Shox's Accused Products bear designs that are nearly identical to the Converse Midsole Trademark and the Converse Outsole Trademark. 137 FIGURE 45: Representative Images of Shoe Shox's Accused Products and the Converse Asserted Trademarks Representative Accused Product Converse Asserted Trademark Converse Shoe Navy Sneaker Navy Sneaker c. Shoe Shox Intended to Copy the Converse Midsole Trademark and the Converse Outsole Trademark and to Infringe and Dilute the Converse Midsole Trademark and the Converse Outsole Trademark 505. Shoe Shox's intent to create associations with Converse and to free ride on Converse's goodwill is evident in the close similarities between Shoe Shox's Accused Products on the one hand, and the Converse Midsole Trademark and the Converse Outsole Trademark on the other hand. On information and belief, the overwhelming similarities are due to Shoe Shox' s intentional copying. d. Shoe Shox Promotes and Sells Accused Products in Competition With Converse's Promotion and Sales of Products Bearing the Asserted Trademarks 506. On information and belief, Shoe Shox promotes and sells its Accused Products in retail stores in the United States and on the Internet. See Shoe Shox, Zulily, 138 http://www.zulily.com/shoe-shox?fromSearch=true&searchTerm=shoe+shox (last visited Aug. 31, 2014), Exhibit 169. 507. On information and belief, Shoe Shox's Accused Products have been promoted and sold for approximately $7. See Exhibit 23. 508. On information and belief, Shoe Shox promotes and sells its Accused Products as casual or lifestyle shoe designs primarily to young boys and girls. e. Relevant Consumers Are Susceptible to Confusion and Dilutive Associations Caused by Shoe Shox's Accused Products 509. Consumers of shoes like those at issue here are not likely to exercise great care in resolving likely confusion in their initial product interest, at the point of purchase, or in post-sale exposure. Even more sophisticated consumers are likely to experience cognitive dissonance regarding the source, affiliation, sponsorship, or association of Shoe Shox's Accused Products when confronted with promotions and sales of Shoe Shox's Accused Products. 510. In the post-sale context, where actual or potential consumers of shoes may only see Shoe Shox's Accused Products on someone's feet in passing, consumers are especially likely to mistake the source, affiliation, or sponsorship of Shoe Shox's Accused Products with Converse and/or the Asserted Trademarks, or to associate the Accused Products with Converse and/or the Asserted Trademarks. f. Shoe Shox's Accused Products Are Likely to Cause Confusion and Dilutive Associations 511. Due to the overwhelming similarities between Shoe Shox's Accused Products and the Converse Midsole and Outsole Trademarks, and for the reasons set forth above, there is (a) a likelihood of confusion between Shoe Shox or its Accused Products, and Converse, the Converse Midsole Trademark, and/or the Converse Outsole Trademark, and/or (b) a likelihood of dilution. 139 AA. Tory Burch LLC 512. On information and belief, Respondent Tory Burch LLC ("Tory Burch"), is a Delaware corporation with its principal place ofbusiness located at 11 West 19th Street, Seventh Floor, New York, NY 10011. See Contact Us, Tory Burch, http://www.toryburch.com/on/demandware.store/Sites-ToryBurch_US- Site/default/CustomerService-ContactUs (last visited Jul. 27, 2014), Compilation Exhibit 170 at 1; see also NYS Department of State Division ofCorporations Entity Information for Tory Burch, Exhibit 171. 1. Tory Burch's Background 513. Tory Burch purports to be an American lifestyle brand, launched in 2004, offering "ready-to-wear, shoes, handbags, accessories, and beauty" products. Compilation Exhibit 170 at 3. 514. On December 2, 2013, Converse sent a cease and desist letter to Tory Burch demanding, inter alia, that it stop violating the Converse Midsole Trademark. Tory Burch refused to enter into a settlement agreement. On information and belief, it continued selling Accused Products. On information and belief, Tory Burch possesses additional inventory of products bearing one or more of the Asserted Trademarks. 2. Tory Burch's Accused Products 515. Tory Burch's Accused Products include at least its "Benjamin" footwear products and colorable imitations thereof Representative images of Tory Burch's Accused Products are attached as Exhibit 172. 516. On information and belief, Tory Burch has promoted and sold additional shoe models bearing the Converse Midsole Trademark under various names and style descriptions. 140 517. On information and belief, in addition to the Accused Products, Tory Burch 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. See shoes, Tory Burch, http://www.toryburch.com/shoes/ (last visited Aug. 31, 2014), Exhibit 165 (excerpt from website). 3. Tory Burch's Unfair Acts, Infringement, and Dilution of the Converse Midsole Trademark 518. On information and belief, Tory Burch manufactures, imports into the United States, promotes, distributes, and/or sells after importation in the United States Tory Burch's Accused Products shown below that infringe and/or are likely to dilute the Converse Midsole Trademark. a. Converse Owned Protectable and Famous Trademark Rights Before Tory Burch Promoted and Sold Accused Products 519. As a result of Converse's near century of substantially exclusive use ofthe Asserted Trademarks, substantial promotion and sales of products bearing the Asserted Trademarks, widespread unsolicited publicity, and attempts to copy the Asserted Trademarks by others, as set forth above, Converse owned highly distinctive, well-recognized, and famous trademark rights in the Asserted Trademarks before Tory Burch promoted and sold Accused Products. 520. The Asserted Trademark relevant to Tory Burch's violations is also the subject of a duly issued United States Trademark Registration. b. Tory Burch's Accused Products Are Virtually Identical to the Converse Midsole Trademark 521. As shown in Figure 46 below, Tory Burch's Accused Products bear designs that are nearly identical to the Converse Midsole Trademark. 141 FIGURE 46: Representative Image of Tory Burch's Accused Products and the Converse Asserted Trademark Representative Accused Product Converse Asserted Trademark Converse Shoe Benjamin c. Tory Burch Intended to Copy the Converse Midsole Trademark and to Infringe and Dilute the Converse Midsole Trademark 522. Tory Burch's intent to create associations with Converse and to free ride on Converse's goodwill is evident in the close similarities between Tory Burch's Accused Products on the one hand, and the Converse Midsole Trademark on the other hand. On information and belief, the overwhelming similarities are due to Tory Burch's intentional copying. d. Tory Burch Promotes and Sells Accused Products in Competition With Converse's Promotion and Sales of Products Bearing the Asserted Trademarks 523. On information and belief, Tory Burch promotes and sells its Accused Products at its retail stores in the United States and on the Internet. For example, on information and belief, Tory Burch sells its Accused Products at Nordstrom retail stores. See Tory Burch "Benjamin," Nordstrom, hrtp://shop.nordstrom.com/s/tory-burch-benjamin-high-top-sneaker/3545279, Exhibit 174. 524. On information and belief, Tory Burch's Accused Products have been promoted and sold for approximately $149. See Exhibit 23. 142 525. On information and belief, Tory Burch promotes and sells its Accused Products as casual or lifestyle shoe designs primarily to adult women. e. Relevant Consumers Are Susceptible to Confusion and Dilutive Associations Caused by Tory Burch's Accused Products 526. Consumers of shoes like those at issue here are not likely to exercise great care in resolving likely confusion in their initial product interest, at the point of purchase, or in post-sale exposure. Even more sophisticated consumers are likely to experience cognitive dissonance regarding the source, affiliation, sponsorship, or association of Tory Burch's Accused Products when confronted with promotions and sales ofTory Burch's Accused Products. 527. In the post-sale context, where actual or potential consumers of shoes may only see Tory Burch's Accused Products on someone's feet in passing, consumers are especially likely to mistake the source, affiliation, or sponsorship ofTory Burch's Accused Products with Converse and/or the Asserted Trademarks, or to associate the Accused Products with Converse and/or the Asserted Trademarks. f. Tory Burch's Accused Products Are Likely to Cause Confusion and Dilutive Associations 528. Due to the overwhelming similarities between Tory Burch's Accused Products and the Converse Midsole Trademark, and for the reasons set forth above, there is (a) a likelihood of confusion between Tory Burch or its Accused Products, and Converse or the Converse Midsole Trademark, and/or (b) a likelihood of dilution. BB. Zulily, Inc. 529. On information and belief, Respondent Zulily, Inc. ("Zulily") is a Delaware corporation with its principal place ofbusiness located at 2601 Elliott Avenue, Suite 200, Seattle, 143 Washington 98121. See Washington Secretary of State Corporations Division Registration Data Search, Exhibit 166; Hoovers Profile for Zulily, Exhibit 167. 1. Zulily's Background 530. Zulily is reported to be "an online retailer that caters to women and mothers," and "sells women and children's apparel and accessories, home decor and kitchen accessories, and toys." Hoovers Profile for Zulily, Exhibit 167. Further, Zulily "specializes in offering products from smaller boutique vendors," and "operates as a 'flash sales' retailer, offering sale and clearance merchandise from various vendors for a limited period of time." !d. Among other things, Zulily promotes, sells, and distributes shoes. 2. Zulily's Accused Products 531. Zulily promotes and sells a number of Respondents' Accused Products, including at least "Chatties" footwear products by Gina Group, "Lilly of New York- Low" footwear products by Lilly New York, "White Low-Top" footwear products by Ositos, ''Navy Two-Tone" footwear products by PW, and "Navy" footwear products by Shoe Sox, as well as colorable imitations thereof Representative images ofZulily's Accused Products are attached as Exhibit 175. 532. On information and belief, Zulily has promoted and sold additional shoe models bearing the Converse Midsole Trademark and the Converse Outsole Trademark under various names and style descriptions. 533. On information and belief, in addition to the Accused Products, Zulily promotes and sells a wide variety of shoe designs that do not include the designs of Accused Products and that do not violate the Asserted Trademarks. See Women's Shoes, Zulily, 144 http://www.zulily.com/shop-by-size/women/shoe?ns=ns_507904330J1412113394519 (last visited Sep. 30, 2014), Exhibit 176. 3. Zulily's Unfair Acts, Infringement, and Dilution of the Converse Midsole Trademark and the Converse Outsole Trademark 534. On information and belief, Zulily manufactures, imports into the United States, promotes, distributes, and/or sells after importation in the United States the Accused Products shown below that infringe and/or are likely to dilute one or more of the Asserted Trademarks. a. Converse Owned Protectable and Famous Trademark Rights Before Zulily Promoted and Sold Accused Products 535. As a result of Converse's near century of substantially exclusive use of the Asserted Trademarks, substantial promotion and sales of products bearing the Asserted Trademarks, widespread unsolicited publicity of the Asserted Trademarks, and attempts to copy the Asserted Trademarks by others, Converse owned highly distinctive, well-recognized, and famous trademark rights in the Asserted Trademarks before Zulily promoted and sold Accused Products. 536. Each of the Asserted Trademarks relevant to Zulily's violations is also the subject of duly issued United States Trademark Registrations. b. Zulily's Accused Products Are Virtually Identical to the Converse Midsole Trademark and the Converse Outsole Trademark 537. As shown in Figure 47 below, Zulily's Accused Products bear designs that are nearly identical to the Converse Midsole Trademark and the Converse Outsole Trademark. 145 FIGURE 47: Representative Images of Zulily's Accused Products and the Converse Asserted Trademarks Representative Accused Product Converse Asserted Trademark Converse Shoe Gina Group: Chatties Zebra Hi-Top Ositos: Men's Low-Top Canvas Lilly New York: Canvas Old School 146 Representative Converse Accused Product Converse Asserted Trademark Shoe Lilly New York: Canvas Old School PW: Two-Tone Sneaker PW: Two-Tone Sneaker Shoe Shox: Navy Sneaker 147 Representative Accused Product Converse Asserted Trademark Converse Shoe Shoe Shox: Navy Sneaker c. Zulily Intended to Copy the Converse Midsole Trademark and the Converse Outsole Trademark and to Infringe and Dilute the Converse Midsole Trademark and the Converse Outsole Trademark 538. Zulily's intent to create associations with Converse and to free ride on Converse's goodwill is evident in the close similarities between Zulily's Accused Products on the one hand, and the Converse Midsole Trademark and the Converse Outsole Trademark on the other hand. On information and belief, the overwhelming similarities are due to Zulily's intentional copying. d. Zulily Promotes and Sells Accused Products in Competition With Converse's Promotion and Sales of Products Bearing the Asserted Trademarks 539. On information and belief, Zulily promotes and sells its Accused Products through its online shopping site. See, e.g., Zulily, http://www.zulily.com/collectiono?fromSearch=true&searchTerm=Collection%270; http://www.zulily.com/LILLY+of+NEW+YORK?ref-=autocomplete&fromSearch=true&searchT erm; http://www.zulily.com/shoe-shox?fromSearch=true&searchTerm=Shoe+Shox; http://www.zulily.com/p/light-pink-black-zebra-hi-top-sneaker-71313- 6894522.html?ns=ns_507904330j1409590651784 (last visited Sep. 30, 2014), Compilation Exhibit 177. 540. On information and belief, Zulily sells Accused Products for between approximately $7 and approximately $21. See Exhibit 23. 148 541. On information and belief, Zulily promotes and sells its Accused Products as casual or lifestyle shoe designs primarily to adult women and young girls. e. Relevant Consumers Are Susceptible to Confusion and Dilutive Associations Caused by Zulily's Accused Products 542. Consumers of shoes like those at issue here are not likely to exercise great care in resolving likely confusion in their initial product interest, at the point of purchase, or in post-sale exposure. Even more sophisticated consumers are likely to experience cognitive dissonance regarding the source, affiliation, sponsorship, or association ofZulily's Accused Products when confronted with promotions and sales of Zulily' s Accused Products. 543. In the post-sale context, where actual or potential consumers of shoes may only see Zulily' s Accused Products on someone' s feet in passing, consumers are especially likely to mistake the source, affiliation, or sponsorship ofZulily's Accused Products with Converse and/or the Asserted Trademarks, or to associate the Accused Products with Converse and/or the Asserted Trademarks. f. Zulily's Accused Products Are Likely to Cause Confusion and Dilutive Associations 544. Due to the overwhelming similarities between Zulily's Accused Products and the Converse and Outsole Trademarks, and for the reasons set forth above, there is (a) a likelihood of confusion between Zulily or its Accused Products, and Converse, the Converse Midsole Trademark, and/or the Converse Outsole Trademark, and/or (b) a likelihood of dilution. CC. Fujian Xinya I&E Trading Co. Ltd. 545. On information and belief, Respondent Fujian Xinya I&E Trading Co. Ltd. ("Xinya"), a/k/a Xinya Footwear and Clothing Import and Export Co. Ltd., specializes in design, development, ecommerce, import and export trade, warehousing logistics and manufacturing, 149 with an address at Floor 4, Building A, China Shoes Capital, ChendaiTown, Jinjiang, Fujian 362211, China. See Contact Us, Xinya, www.china0595.com (last visited Aug. 29, 2014), Compilation Exhibit 178 at 1 (translated excerpt of website by Google Chrome). On information and belief, Xinya is a subsidiary ofFujian Xinya Group Co., Ltd., located at Fujian Jinjiang Dora Street, Building 9-10 Frontier Community Building, New Sub-Group 362200 China. See Contact, Xinya, www.fjxinya.com/contactus, Compilation Exhibit 178 at 2 (translated excerpt of website by Google Chrome); see also Business Registry Record for Fujian Xinya Group Co. Ltd., Compilation Exhibit 178 at 5 - 6 (with translation). 1. Xinya's Background 546. According to Xinya's website, it has "excellent design capability [for footwear] ... and [] can make designs according to [its] customers' requirements." See About, Xinya, www.china0595.com/XINYA_ ENGLISh2/about_ Us.php, Compilation Exhibit 179 at 1. Xinya's website promotes its "leisure shoes," which include "canvas shoes." Products, Xinya, http://www.china0595.com/XINYA_ENGLISH2/products.php?product _cid=41 (last visited Sept. 29, 2014), Compilation Exhibit 179 at 2. 547. On information and belief, Xinya has the ability to design and manufacture a large variety of footwear through its own manufacturing factory, Jinjiang Xinya Sports Goods Co Ltd., as well as through its partner factories. 2. Xinya's Distribution of Accused Products 548. On information and belief, Xinya has imported and/or sold for importation Accused Products, including selling for importation Accused Products to at least Respondent FILA as depicted in Figure 48 below. See Compilation Exhibit 179. Converse expects to learn additional information regarding Xinya's and FILA's supply chains through discovery. 150 FIGURE 48: Suspected Supply Chain of Accused Products Based on Information Known at Filing of Complaint FILA ? 549. On information and belief, Xinya exported 273,756 pairs of footwear to FILA in the United States in 2012 and 2013, including one or more Accused Products. See Excerpt of Import Records for Xinya, Confidential Exhibit 180. 3. Previous Seizures of Unauthorized Converse Products Exported by Xinya 550. On information and belief, customs in Xiamen, China seized 23 pairs of counterfeit Chuck Taylor All Star shoes exported by Xinya, on or around July 14, 2011. See Documentation Relating to Seizure, Confidential Compilation Exhibit 181 (with translation). 4. Xinya's Unfair Acts, Infringement, and Dilution ofthe Converse Midsole Trademark 551. On information and belief, Xinya has promoted, imported, and/or sold for importation into the United States at least Respondent FILA's Accused Products shown above that infringe and/or dilute one or more of the Asserted Trademarks. a. Converse Owned Protectable and Famous Trademark Rights Before Xinya Promoted and Sold for Importation Accused Products 552. As a result of Converse's near century of substantially exclusive use of the Asserted Trademarks, substantial promotion and sales of products bearing the Asserted Trademarks, widespread unsolicited publicity, and attempts to copy the Asserted Trademarks by others, as set forth above, Converse owned highly distinctive, well-recognized, and famous 151 trademark rights in the Asserted Trademarks before Xinya promoted and sold for importation Accused Products. 553. The Asserted Trademark relevant to Xinya's violations is also the subject of a duly issued United States Trademark Registration. b. Xinya's Accused Products Are Virtually Identical to the Converse Midsole Trademark 554. On information and belief, as shown above in connection with FILA's Accused Products, Xinya' s Accused Products bear designs that are nearly identical to the Converse Midsole Trademark. c. Xinya Intended to Copy the Converse Midsole Trademark and to Infringe and Dilute the Converse Midsole Trademark 555. Xinya's intent to create associations with Converse and to free ride on Converse's goodwill is evident in the close similarities between Xinya's Accused Products on the one hand, and the Converse Midsole Trademark on the other hand. On information and belief, the overwhelming similarities are due to Xinya's intentional copying. d. Xinya Sells Accused Products in Competition with Converse's Products Bearing the Asserted Trademarks 556. On information and belief, as set forth in more detail above in connection with FILA, Xinya's Accused Products have been promoted and sold at retail stores in the United States and on the Internet, and as casual or lifestyle shoe designs to adult men and women. e. Relevant Consumers Are Susceptible to Confusion and Dilutive Associations Caused by Xinya's Accused Products 557. Consumers of shoes like those at issue here are not likely to exercise great care in resolving likely confusion in their initial product interest, at the point of purchase, or in post-sale exposure. Even more sophisticated consumers are likely to experience cognitive dissonance 152 regarding the source, affiliation, sponsorship, or association ofXinya's Accused Products when confronted with promotions and sales ofXinya's Accused Products. 558. In the post-sale context, where actual or potential consumers of shoes may only see Xinya's Accused Products on someone's feet in passing, consumers are especially likely to mistake the source, affiliation, or sponsorship ofXinya's Accused Products with Converse and/or the Asserted Trademarks, or to associate the Accused Products with Converse and/or the Asserted Trademarks. f. Xinya's Accused Products Are Likely to Cause Confusion and Dilutive Associations 559. Due to the overwhelming similarities between Xinya's Accused Products and the Converse Midsole Trademark, and for the reasons set forth above, there is (a) a likelihood of confusion between Xinya or its Accused Products, and Converse or the Converse Midsole Trademark, and/or (b) a likelihood of dilution. DD. Zhejiang Ouhai International Trade Co., Ltd. 560. On information and belief, Respondent Zhejiang Ouhai International Trade Co., Ltd. ("Ouhai"), a/k/a Zhejiang Ouhai Foreign Trade Corporation and Wenzhou Ouhai Foreign Trade Co., Ltd., is a diversified enterprise group engaged in the import and export of, inter alia, footwear through its partner factories with an address at Building B, Jinzhou Building, Wenzhou Avenue, Wenzhou, Zhejiang, China. See Contact, Wenzhou Ouhai, http://en.jinzhougroup.com/comcontent_detaill&i=9&com Contentld=9.html (last visited Sept. 23, 2014); About Us, Wenzhou Ouhai, http://en.jinzhougroup.com/comcontent_detail/ &i=12&comContentld=12.html (last visited Sept. 23, 2014), Compilation Exhibit 182 at 1, 2 (translated website). On information and belief, Ouhai is a subsidiary ofWenzhou Jinzhou Group Co Ltd, located at Jinzhou Industrial Park, Caodai Village, Guoxi Town, Ouhai, 153 Wenzhou, Zhejiang Province, China. See Contact, http://www.jinzhougroup.com/comcontent_ detail/ &i= 13 &comContentld= 13 .htrnl, Compilation Exhibit 182 at 3. 1. Ouhai's Distribution of Accused Products 561. On information and belief, Ouhai has imported and/or sold for importation Accused Products, including to at least Respondents Aldo and OPPO as depicted in Figure 49 below. Converse expects to learn additional information regarding Ouhai's, Aldo's, and OPPO's supply chains through discovery. FIGURE 49: Suspected Supply Chain of Accused Products Based on Information Known at Filing of Complaint ALDO OPPO ? 562. On information and belief, Ouhai exported 36,984 pairs of footwear to Aldo in the United States in 2011, including one or more pairs of Accused Products. See Excerpt oflmport Records for Ouhai, Confidential Compilation Exhibit 183. On information and belief, Ouhai has exported 115,716 pairs of footwear to OPPO in the United States between 2011 and 2013, including one or more pairs of Accused Products. See id. 2. Previous Seizures of Unauthorized Converse Products Exported by Ouhai 563. On information and belief, customs in Taranto, Italy seized approximately 13,578 pairs of counterfeit Converse footwear, exported by Ouhai, on or before February 1, 2011. See Documentation Relating to Seizure, Confidential Compilation Exhibit 184 (with translation). 154 3. Ouhai's Unfair Acts, Infringement, and Dilution of the Converse Midsole Trademark 564. On information and belief, Ouhai has promoted, imported, and/or sold for importation into the United States at least Aldo's and OPPO's Accused Products shown above that infringe and/or dilute one or more of the Asserted Trademarks. a. Converse Owned Protectable and Famous Trademark Rights Before Ouhai Promoted and Sold for Importation Accused Products 565. As a result of Converse's near century of substantially exclusive use ofthe Asserted Trademarks, substantial promotion and sales of products bearing the Asserted Trademarks, widespread unsolicited publicity, and attempts to copy the Asserted Trademarks by others, as set forth above, Converse owned highly distinctive, well-recognized, and famous trademark rights in the Asserted Trademarks before Ouhai promoted and sold for importation the Accused Products. 566. The Asserted Trademark relevant to Ouhai's violations is also the subject of a duly issued United States Trademark Registration. b. Ouhai's Accused Products Are Virtually Identical to the Converse Midsole Trademark 567. On information and belief, as shown above in connection with Aldo's and OPPO's Accused Products, Ouhai's Accused Products bear designs that are nearly identical to the Converse Midsole Trademark. c. Ouhai Intended to Copy the Converse Midsole Trademark and to Infringe and Dilute the Converse Midsole Trademark 568. Ouhai's intent to create associations with Converse and to free ride on Converse's goodwill is evident in the close similarities between Ouhai's Accused Products on 155 the one hand, and the Converse Midsole Trademark on the other hand. On information and belief, the overwhelming similarities are due to Ouhai's intentional copying. d. Ouhai Sells Accused Products in Competition with Converse's Products Bearing the Asserted Trademarks 569. On information and belief, as set forth in more detail above in connection with Aldo and OPPO, Ouhai's Accused Products have been promoted and sold at retail stores in the United States and on the Internet, and as casual or lifestyle shoe designs to adult men and women. e. Relevant Consumers Are Susceptible to Confusion and Dilutive Associations Caused by Ouhai's Accused Products 570. Consumers of shoes like those at issue here are not likely to exercise great care in resolving likely confusion in their initial product interest, at the point of purchase, or in post-sale exposure. Even more sophisticated consumers are likely to experience cognitive dissonance regarding the source, affiliation, sponsorship, or association ofOuhai's Accused Products when confronted with promotions and sales of Ouhai' s Accused Products. 571. In the post-sale context, where actual or potential consumers of shoes may only see Ouhai's Accused Products on someone's feet in passing, consumers are especially likely to mistake the source, affiliation, or sponsorship ofOuhai's Accused Products with Converse and/or the Asserted Trademarks, or to associate the Accused Products with Converse and/or the Asserted Trademarks. f. Ouhai's Accused Products Are Likely to Cause Confusion and Dilutive Associations 572. Due to the overwhelming similarities between Ouhai's Accused Products and the Converse Midsole Trademark, and for the reasons set forth above, there is (a) a likelihood of 156 confusion between Ouhai or its Accused Products, and Converse or the Converse Midsole Trademark, and/or (b) a likelihood of dilution. EE. Wenzhou Cereals Oils and Foodstuffs Foreign Trade Co., Ltd. 573. On information and belief, Respondent Wenzhou Cereals Oils and Foodstuffs Foreign Trade Co., Ltd. ("Wenzhou") is a foreign trade company involved in the export of, inter alia, footwear and apparel, and located at 24/F, Wenzhou International Trade Centre, 8 Liming West Road, Wenzhou 325003, Zhejiang, China. See Contact, Wenzhou, http://cofwz.com/enlindex.jsp?id0=z0hla351ky (last visited Sept. 239, 2014), Compilation Exhibit 185 at 1 (website translated by Google Chrome). On information and belief, Wenzhou is a subsidiary ofWenzhou International Trade Group Co., Ltd., located at 13/F, Wenzhou International Trade Center, 236 West Liming Road, Wenzhou City, Zhejiang Province, and does business as Whenzhou King-Footwear Co., Ltd ("Wan Wei"). 1. Wenzhou's Background 574. Wenzhou, on information and belief doing business as Wan Wei, describes itself as an "integrated shoe-making" enterprise "mainly engaged in canvas shoes, casual shoes, vulcanized shoes, injection shoes and other products." See About Us, Wan Wei, http://www.king-footwear.com/Iternllist.asp?id=1492 (last visited Sept. 24, 2014), Compilation Exhibit 186 at 1 (website translated by Google Chrome). Wan Wei's website promotes shoes bearing the Converse Midsole Trademark. See Products, Wan Wei, http://www.king- footwear.com/Item/Show.asp?m=5&d=567 (last visited Sept. 24, 2014), Compilation Exhibit 186 at 2-6 (website translated by Google Chrome). 157 2. Wenzhou's Distribution of Accused Products 575. On information and belief, Wenzhou has imported and/or sold for importation Accused Products, including to at least Respondent Ositos as depicted in Figure 50 below. Converse expects to learn additional information regarding Wenzhou's and Ositos' supply chains through discovery. FIGURE 50: Suspected Supply Chain of Accused Products Based on Information Known at Filing of Complaint Wenzhou Ositos ? 576. On information and belief, Wenzhou exported 8,160 pairs offootwearto Ositos in the United States in 2010, including one or more pairs of Accused Products. See Excerpt of Import Records for Wenzhou, Confidential Compilation Exhibit 187. 3. Previous Seizures of Unauthorized Converse Products Exported by Wenzhou 577. On information and belief, customs in Rijeka, Croatia seized 24,720 pairs of unauthorized Converse shoes exported by Wenzhou on or around August 20, 2013. See Documentation Relating to Seizure, Confidential Compilation Exhibit 188 (with translation). 4. Wenzhou's Unfair Acts, Infringement, and Dilution of the Converse Midsole Trademark 578. On information and belief, Wenzhou has promoted, imported, and/or sold for importation into the United States at least Ositos' Accused Products shown above that infringe and/or dilute one or more of the Asserted Trademarks. 158 a. Converse Owned Protectable and Famous Trademark Rights Before Wenzhou Promoted and Sold for Importation Accused Products 579. As a result of Converse's near century of substantially exclusive use ofthe Asserted Trademarks, substantial promotion and sales of products bearing the Asserted Trademarks, widespread unsolicited publicity, and attempts to copy the Asserted Trademarks by others, as set forth above, Converse owned highly distinctive, well-recognized, and famous trademark rights in: the Asserted Trademarks before Wenzhou promoted and sold for importation Accused Products. 580. The Asserted Trademark relevant to Wenzhou's violations is also the subject of a duly issued United States Trademark Registration. b. Wenzhou's Accused Products Are Virtually Identical to the Converse Midsole Trademark 581. On information and belief, as shown above in connection with Ositos' Accused Products, Wenzhou's Accused Products bear designs that are nearly identical to the Converse Midsole Trademark. c. Wenzhou Intended to Copy the Converse Midsole Trademark and to Infringe and Dilute the Converse Midsole Trademark 582. Wenzhou's intent to create associations with Converse and to free ride on Converse's goodwill is evident in the close similarities between Wenzhou's Accused Products on the one hand, and the Converse Midsole Trademark on the other hand. On information and belief, the overwhelming similarities are due to Wenzhou's intentional copying. d. Wenzhou Sells Accused Products in Competition with Converse's Products Bearing the Asserted Trademarks 583. On information and belief, as set forth in more detail above in connection with Ositos, Wenzhou's Accused Products have been promoted and sold at retail stores in the United 159 States and on the Internet, and as casual or lifestyle shoe designs primarily to teen boys and girls, and adult men and women. e. Relevant Consumers Are Susceptible to Confusion and Dilutive Associations Caused by Wenzhou's Accused Products 584. Consumers of shoes like those at issue here are not likely to exercise great care in resolving likely confusion in their initial product interest, at the point of purchase, or in post-sale exposure. Even more sophisticated consumers are likely to experience cognitive dissonance regarding the source, affiliation, sponsorship, or association ofWenzhou's Accused Products when confronted with promotions and sales ofWenzhou's Accused Products. 585. In the post-sale context, where actual or potential consumers of shoes may only see Wenzhou's Accused Products on someone's feet in passing, consumers are especially likely to mistake the source, affiliation, or sponsorship ofWenzhou's Accused Products with Converse and/or the Asserted Trademarks, or to associate the Accused Products with Converse and/or the Asserted Trademarks. f. Wenzhou's Accused Products Are Likely to Cause Confusion and Dilutive Associations 586. Due to the overwhelming similarities between Wenzhou's Accused Products and the Converse Midsole Trademark, and for the reasons set forth above, there is (a) a likelihood of confusion between Wenzhou or its Accused Products, and Converse or the Converse Midsole Trademark, and/or (b) a likelihood of dilution. V. RESPONDENTS' UNFAIR METHODS OF COMPETITION AND UNFAIR ACTS 587. Converse owns all right, title, and interest in the Asserted Trademarks and has standing to bring an action for trademark infringement, false designation of origin, unfair 160 competition, and/or trademark dilution under the Lanham Act, 15 U.S. C. § 1059 et seq. and common law. 588. The Asserted Trademarks are entitled to strong protection under common law. The Asserted Trademarks each have a distinctive appearance using unique and non-functional designs. Converse has extensively and continuously promoted and used the Asserted Trademarks for many decades in the United States and worldwide. Through extensive and continuous use, the Asserted Trademarks have each acquired substantial secondary meaning and become well-known indicators of the origin and quality of Converse footwear. Before Respondents' actions complained of herein, the Converse Midsole Trademark was famous. 589. The Asserted Trademarks are also federally registered and entitled to protection under federal law. The '753 Registration is prima facie evidence of the validity of the Converse Midsole Trademark and of Converse's registration ofthe mark, of Converse's ownership ofthe mark, and of Converse's exclusive right to use the Converse Midsole Trademark in commerce in connection with footwear. The '960 and '1 03 Registrations have become incontestable and constitute conclusive evidence of the validity of the Converse Outsole Trademark and of Converse's registration of the mark, of Converse's ownership of the mark, and of Converse's exclusive right to use the Converse Outsole Trademark in commerce in connection with footwear. 590. Respondents have manufactured abroad, imported, distributed, and/or sold Accused Products in the United States, or colorable imitations thereof, without authorization from Converse in violation of Converse's rights in the Asserted Trademarks as described below. 161 A. Trademark Infringement Under Section 32(1) of the Lanham Act (15 U.S.C. § 1114(1)) 591. Respondents have, without authorization from Converse, manufactured abroad, imported, distributed, and/or sold Accused Products in the United States in violation of Section 32(1) ofthe Lanham Act, 15 U.S. C. § 1114(1). 592. Table 1 in Section IV above identifies Converse's Asserted Trademarks infringed by each of the Respondents' Accused Products. 593. Respondents' use ofthe Asserted Trademarks identified in Table 1 above, and of colorable imitations thereof, is likely to cause consumer confusion as to the origin and/or sponsorship/affiliation of the Accused Products, at least by creating the false and misleading impression that the Accused Products are manufactured by, authorized by, or otherwise associated with Converse, as discussed in Section IV above. 594. As discussed in Sections IX and XI below, Respondents' use of the Asserted Trademarks has caused, and unless stopped, will continue to cause substantial injury to Converse, including at least substantial injury to the goodwill and reputation for quality associated with the Asserted Trademarks. 595. On information and belief, Respondents' use of the Asserted Trademarks, and of colorable imitations thereof, has been intentional, willful, and malicious. Respondents' bad faith is evidenced at least by the similarity of the Accused Products to the Asserted Trademarks, as shown in Section IV above. B. False Designation of Origin/Unfair Competition Under Section 43(a) of the Lanham Act (15 U.S.C. § 1125(a)) 596. Respondents have, without authorization from Converse, manufactured abroad, imported, distributed, and/or sold Accused Products in the United States in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). 162 597. Table 1 above identifies the Asserted Trademarks that give rise to a claim for false designation of origin/unfair competition by each of the Respondents' Accused Products. 598. Respondents' use ofthe Asserted Trademarks identified in Table 1 above, and of colorable imitations thereof, constitutes a false designation of origin that is likely to cause consumer confusion, mistake, or deception as to the origin, sponsorship, or approval of the Accused Products by creating the false and misleading impression that the Accused Products are manufactured by, authorized by, or otherwise associated with Converse as discussed in Section IV above. 599. As discussed in Sections IX and XI below, Respondents' use of the Asserted Trademarks has caused, and unless stopped, will continue to cause substantial injury to Converse, including at least substantial injury to the goodwill and reputation for quality associated with the Asserted Trademarks. 600. On information and belief, Respondents' use of the Asserted Trademarks, and of colorable imitations thereof, has been intentional, willful, and malicious. Respondents' bad faith is evidenced at least by the similarity of the Accused Products to the Asserted Trademarks, as shown in Section IV above. C. Common Law Trademark Infringement and Unfair Competition 601. Respondents have, without authorization from Converse, manufactured abroad, imported, distributed, and/or sold Accused Products in the United States in violation of the common law. 602. Table 1 above identifies the Asserted Trademarks that give rise to a claim for common law trademark infringement and unfair competition by each of the Respondents' Accused Products. 163 603. The Asserted Trademarks have a distinctive appearance using unique and non• functional designs. For example, the designs of the Asserted Trademarks do not result from the most efficient or cost-effective manufacturing or assembly method, and are not essential to competition as demonstrated by the wide variety of alternative competitive shoe designs that do not use the Asserted Trademarks. Additionally, as discussed in Section II above, Converse has extensively and continuously promoted and used the Asserted Trademarks for many decades in the United States. Through that extensive and continuous use, the Asserted Trademarks have acquired substantial secondary meaning in the marketplace and are well-known indicators of the origin and quality of Converse footwear. 604. Respondents' use of the Asserted Trademarks identified in Table 1 above, and of colorable imitations thereof, is likely to cause consumer confusion as to the origin or sponsorship of the Accused Products by creating the false and misleading impression that the Accused Products are manufactured by, authorized by, or otherwise associated with Converse as discussed in Section IV above. 605. As discussed in Sections IX and XI below, Respondents' use of the Asserted Trademarks has caused, and unless stopped, will continue to cause substantial injury to Converse, including at least substantial injury to the goodwill and reputation for quality associated with the Asserted Trademarks. 606. On information and belief, Respondents' use ofthe Asserted Trademarks, and of colorable imitations thereof, has been intentional, willful, and malicious. Respondents' bad faith is evidenced at least by the similarity of the Accused Products to the Asserted Trademarks, as shown in Section IV above. 164 D. Dilution Under Section 43(c) of the Lanham Act (15 U.S.C. § 1125(c)) 607. Respondents have, without authorization from Converse, manufactured abroad, imported, distributed, and/or sold Accused Products in the United States in violation of Converse's rights in the Converse Midsole Trademark under Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c). 608. The Converse Midsole Trademark acquired substantial secondary meaning and became famous in the marketplace before Respondents commenced their unauthorized uses of the Converse Midsole Trademark in connection with the Accused Products. 609. Respondents' use of the Converse Midsole Trademark, and of colorable imitations thereof, is likely to cause, and has caused, dilution of the famous Converse Midsole Trademark at least by eroding the public's exclusive identification of the famous Converse Midsole Trademark with Converse and by lessening the capacity of the famous Converse Midsole Trademark to identify and distinguish Converse footwear as discussed in Section IV above. 610. As discussed in Sections IX and XI below, Respondents' use ofthe Converse Midsole Trademark has caused, and unless stopped, will continue to cause substantial injury to Converse, including at least substantial injury to the goodwill and reputation for quality associated with the Converse Midsole Trademark. 611. On information and belief, Respondents' use ofthe Converse Midsole Trademark, and of colorable imitations thereof, has been intentional, willful, and malicious. Respondents' bad faith is evidenced at least by the similarity of the Accused Products to the Converse Midsole Trademark, as shown in Section IV above. 165 VI. SPECIFIC INSTANCES OF RESPONDENTS' UNFAIR IMPORTATIONS AND SALES 612. On information and belief, Respondents are, and will continue, importing, selling for importation, and/or selling within the United States after importation footwear products that infringe and/or are likely to dilute one or more of the Asserted Trademarks in violation of Section 337. 613. Converse has obtained in the United States representative samples of the Respondents' Accused Products as described in Exhibits 23, 40, 48, and 189. Specific instances of importation, sale for importation, and/or sale within the United States after importation of Accused Products by the Respondents are set forth below. These examples are exemplary in nature and not intended to restrict the scope of any exclusion order or other remedy the Commission may order. 614. In June of2014, a purchase ofSkechers' Accused Product, "Bobs Utopia," was made in the United States on behalf of Converse from PeltzShoes.com. The country of origin label affixed to the packaging and inside tongue of the Accused Product indicates that it was "Made in China." See Exhibit 23, Documentation of purchase. 615. In June of2014, a purchase ofSkechers' Accused Product, "Bobs Utopia Skyline," was made in the United States on behalf of Converse from Skechers.com. The country of origin label affixed to the packaging and inside tongue of the Accused Product indicates that it was "Made in China." See Exhibit 23, Documentation of purchase. 616. In June of2014, a purchase ofSkechers' Accused Product, "HyDee HyTop Gimme Starry Skies," was made in the United States on behalf of Converse via Amazon.com. The country of origin label affixed to the packaging and inside tongue of the Accused Product indicates that it was "Made in China." See Exhibit 23, Documentation of purchase. 166 617. In July of2014, a purchase ofSkechers' Accused Product, "Twinkle Toes Shuffles- Streetfeet," was made in the United States on behalf of Converse from Skechers.com. The country of origin label affixed to the packaging and inside tongue of the Accused Product indicates that it was "Made in China." See Exhibit 23, Documentation of purchase. 618. In August of2014, a purchase ofSkechers' Accused Product, "Twinkle Toes Wild Spark," was made in the United States on behalf of Converse via Amazon.com. The country of origin label affixed to the packaging and inside tongue of the Accused Product indicates that it was "Made in China." See Exhibit 23, Documentation of purchase. 619. In June of2014, a purchase ofSkechers' Accused Product, "Daddy'$ Money Gimme Lone Star," was made in the United States on behalf of Converse via Amazon.com. The country of origin label affixed to the packaging and inside tongue label of the Accused Product indicates it was made "Made in China." See Exhibit 23, Documentation of purchase. 620. In June of2014, a purchase ofSkechers' Accused Product, "Daddy'$ Money Gimme Mucho Dinero," was made in the United States on behalfofConverse via Amazon.com. The country of origin label affixed to the packaging and inside tongue label of the Accused Product indicates it was made "Made in China." See Exhibit 23, Documentation of purchase. 621. In August of2014, a purchase ofWalmart's Accused Product was made in the United States on behalf of Converse from Walmart.com. The country of origin label affixed to the inside tongue of the Accused Product indicates that it was "Made in China." See Exhibit 23, Documentation of purchase. 622. In January of2014, a purchase of Aldo's Accused Product was made in the United States on behalf of Converse from AldoShoes.com. The country of origin label affixed to 167 the inside tongue ofthe Accused Product indicates that it was "Made in China." See Exhibit 48, Documentation of purchase. 623. In August of2014, a purchase ofBrian Lichtenberg's Accused Product was made in the United States on behalf of Converse from Kitson through ShopKitson.com. The country of origin label affixed to the packaging and inside tongue of the Accused Product indicates that it was "Made in Vietnam." See Exhibit 23, Documentation of purchase. 624. In August of2014, a purchase ofGotta Flurt's Accused Product was made in the United States on behalf of Converse through Amazon.com. The country of origin label affixed to the inside tongue of the Accused Product indicates that it was "Made in China." See Exhibit 23, Documentation of purchase. 625. In December of2013, a purchase ofDioniso's Accused Product was made in the United States on behalf of Converse from ShopKitson.com. The country of origin label affixed to the hangtag of the Accused Product indicates that it was "Made in Italy." See Exhibit 40, Documentation of purchase. 626. In September of2014, a purchase of a representative Edamame Accused Product was made in the United States on behalf of Converse via Sears. com. The country of origin label affixed to of the hangtag ofthe Accused Product indicates that it was "Made in China." See Exhibit 23, Documentation of purchase. 627. In August of2013, Esquire's Accused Product was photographed at the WSA trade show in Las Vegas, Nevada. See Exhibit 189, Documentation on Esquire. Esquire's website represents that its "overseas offices provide oversight of all Asian production, integrating with a network ofpartnering factories in East Asia. The majority ofhigh-quality fashion footwear produced by Esquire is concentrated in five Chinese manufacturing facilities." 168 See Exhibit 75. Likewise, the website represents that it "work[s] with consolidators and U.S. Customers, ensuring smooth sailing for the order, seeing the delivery through to the U.S." Id. 628. In April of2014, a purchase ofFILA's Accused Product was made in the United States on behalf of Converse from ShoeZoo via Sears.com. The country of origin label affixed to the inside tongue of the Accused Product indicates that it was "Made in China." See Exhibit 23, Documentation of purchase. 629. In August of2014, a purchase ofFortune Dynamic's Accused Product was made in the United States on behalf of Converse via Amazon. com. The country of origin label affixed to the outsole of the Accused Product indicates that it was "Made in China." See Exhibit 23, Documentation of purchase. 630. In February of2014, a purchase of Gina Group's Accused Product was made in the United States on behalf of Converse from Zulily.com. The country of origin label affixed to the hangtag of the Accused Product indicates that it was "Made in China." See Exhibit 23, Documentation of purchase. 631. In September of2014, a purchase ofH & M's Accused Product was made in the United States on behalf of Converse from hm.com. The country of origin label affixed to the inside tongue of the Accused Product indicates that it was "Made in China." See Exhibit 23, Documentation ofpurchase. 632. In May of2014, a purchase of ASH's Accused Product was made in the United States on behalf of Converse from AshFootwearUSA.com. The country of origin label affixed to the inside tongue of the Accused Product indicates that it was "Made in China." See Exhibit 23, Documentation ofpurchase. 169 633. In August of2014, a purchase ofSkeanie's Accused Product was made in the United States on behalf of Converse from Stryde.com.au. The website for Skeanie, www.skeanie.co.uk, indicates that all of its products are made in China. See Exhibit 23, Documentation of purchase. 634. In September of2014, a purchase ofEd Hardy's Accused Product was made in the United States on behalf of Converse via Amazon. com. The country of origin label affixed to the packaging and inside tongue of the Accused Product indicates that it was "Made in Vietnam." See Exhibit 23, Documentation of purchase. 635. In September of2014, a purchase of a representative Kmart Accused Product, the "Joe Boxer High," was made in the United States on behalf of Converse through Kmart.com. The country of origin label affixed to the inside tongue of the Accused Product indicates that it was "Made in China." See Exhibit 23, Documentation of purchase. 636. In September of2014, a purchase of a representative Lilly ofNew York Accused Product was made in the United States on behalf of Converse from Zulily.com. The country of origin label affixed to the hangtag of the Accused Product indicates that it was "Made in China." See Exhibit 23, Documentation of purchase. 637. In August of2014, a purchase ofBape's Accused Product was made in the United States on behalf of Converse via eBay. The country of origin label affixed to the inside of the Accused Product indicates that it was "Made in Japan." See Exhibit 23, Documentation of purchase. 638. In January of2014, a purchase ofOPPO's Accused Product was made in the United States on behalf of Converse from Beston Fire via Sears.com. The country of origin label 170 affixed to the outsole of the Accused Product indicates that it was "Made in China." See Exhibit 23, Documentation of purchase. 639. In August of2014, a purchase ofDemonia Deviant's Accused Product was made in the United States on behalf of Converse from Shoebuy.com. The country of origin label affixed to the outsole of the Accused Product indicates that it was "Made in China." See Exhibit 23, Documentation of purchase. 640. In February of2014, a purchase ofOsitos' Accused Product was made in the United States on behalf of Converse from Fashoutlet via Amazon. com. The country of origin label affixed to the inside tongue ofthe Accused Product indicates that it was "Made in China." See Exhibit 23, Documentation of purchase. 641. In March of2014, a purchase ofPW Shoes New York's Accused Product was made in the United States on behalf of Converse from Zulily.com. The country of origin labels affixed to the inside tongue and packaging of the Accused Product indicate that it was "Made in China." See Exhibit 23, Documentation of purchase. 642. In March of2014, a purchase ofRalph Lauren's Accused Product was made in the United States on behalf of Converse from Macys.com. The country of origin labels affixed to the inside tongue and packaging of the Accused Product indicates that it was "Made in China." See Exhibit 23, Documentation of purchase. 643. In February of2014, Foreversun's Accused Product was photographed at the WSA trade show in Las Vegas, Nevada. See Exhibit 189, Documentation on Foreversun. Foreversun's website represents that its shoe "factories [are] locate[ d) in Guangdong, Fujian and Zhejiang," and its shoes are "mainly exported to Europe, America and [the] Middle East." See Exhibit 162. 171 644. In February of2014, a purchase of Shoe Shox's Accused Product was made in the United States on behalf of Converse from Zulily.com. The country of origin label affixed to the hangtag of the Accused Product indicates that it was "Made in China." See Exhibit 23, Documentation of purchase. 645. In August of2014, a purchase ofTory Burch's Accused Product was made in the United States on behalf of Converse via eBay.com. The country of origin label affixed to the outsole of the Accused Product indicates that it was "Made in China." See Exhibit 23, Documentation of purchase. 646. In February, March, and September of2014, purchases ofZulily's Accused Products were made in the United States on behalf of Converse as set forth above in relation to Gina Group, Lilly New York, PW, and Shoe Shox. The country of origin information for those shoes indicates they were "Made in China." See Exhibit 23, Documentation of purchase. 647. On information and belief, Xinya exported 273,756 pairs offootwearto FILA in the United States during the period from January 2011 to May 2014, including one or more Accused Products. See Exhibit 180. Additionally, in April of2014, a purchase ofFILA's Accused Product that, on information and belief, was manufactured by Xinya was made in the United States on behalf of Converse from ShoeZoo via Sears. com. The country of origin label affixed to the inside tongue of the Accused Product indicates that it was "Made in China." See Exhibit 23, Documentation of purchase. 648. On information and belief, Ouhai exported 36,984 pairs of footwear to the United States to Aldo in January of2011. See Exhibit 183. Additionally, in January of2014, a purchase of Aldo's Accused Product that, on information and belief, was manufactured by Ouhai was made in the United States on behalf of Converse from AldoShoes.com. The country of 172 origin label affixed to the inside tongue of Aldo's Accused Product indicates that it was "Made in China." See Exhibit 48, Documentation of purchase. 649. On information and belief, Ouhai exported 115,716 pairs offootwearto the United States to OPPO between January 2011 and March 2014, including one or more pairs of Accused Products. See Exhibit 183. Additionally, in January of2014, a purchase ofOPPO's Accused Product that, on information and belief, was manufactured by Ouhai was made in the United States on behalf of Converse from Beston Fire via Sears.com, respectively. The country of origin label affixed to the outsole ofOPPO's Accused Products indicates that they were "Made in China." See Exhibit 23, Documentation of purchase. 650. On information and belief, Wenzhou exported 8,160 pairs of footwear to the United States to Ositos between January 2010 and December 2013, including one or more pairs of Accused Products. See Exhibit 187. Additionally, in February of2013, a purchase ofOsitos' Accused Product that, on information and belief, was manufactured by Wenzhou was made in the United States on behalf of Converse from Fashoutlet via Amazon. com. The country of origin label affixed to the inside tongue ofthe Accused Product indicates that it was "Made in China." See Exhibit 23, Documentation of purchase. VII. CLASSIFICATION OF THE ACCUSED PRODUCTS UNDER THE HARMONIZED TARIFF SCHEDULE OF THE UNITED STATES 651. The Accused Products are believed to fall within at least the classifications of the harmonized tariff schedules of the United States shown in Exhibit 190. These classifications are intended for illustrative purposes only and are not intended to restrict the scope or type of products accused. 173 VIII. THE DOMESTIC INDUSTRY A. The Technical Prong 652. The Converse Midsole Trademark appears on Converse Shoes. See Exhibit 191. 653. The trademark featured in the '753 Registration appears on Converse Shoes. See Exhibit 192. 654. The Converse Outsole Trademark appears on Converse Shoes. See Exhibit 193; Exhibit 194. 655. The trademark featured in the '103 Registration appears on Converse Shoes. See Exhibit 193. 656. The trademark featured in the '960 Registration appears on Converse Shoes. See Exhibit 194. B. The Economic Prong 1. Overview of Converse Shoe Activities 657. Converse, as discussed previously, has a long history as a U.S. innovator in shoe design, development, and production. Converse has established and maintains a robust domestic industry relating to Converse Shoes based on its critical design, production-related, and support activities, and its significant/substantial investments in plant and equipment, employment of labor and capital, and investments in the exploitation of the Asserted Trademarks. Converse Shoes sold in the United States today are designed and developed at Converse's headquarters in North Andover, Massachusetts. There, Converse conducts design, production-related, and support activities for Converse Shoes, including the development, testing, and production of innovative materials, and the design and manufacture of shoe production prototypes and samples using advanced design and production technologies. 174 658. Converse's production-related activities occur in three main stages: Product Management, Product Design, and Product Development. Product Management ｾ｣ｴｩｶｩｴｩ･ｳ＠ include research on current and past or vintage Converse Shoe designs, market trends, artistic trends, demand for existing and new Converse Shoes, and other consumer-based product research and feedback. Based on this information, the Product Management team works with the Product Design team to develop the portfolio of Converse Shoes that will be designed, developed, and offered to consumers in upcoming seasons. 659. The Product Design team creates design sketches and product renderings using a variety of equipment, ranging from traditional drawing tools to sophisticated CAD design software, preparing and evaluating multiple iterations of new Converse Shoe designs. Graphic designers and materials engineers work to create new and unique designs and characteristics in canvas fabric and other materials. Eventually, these new designs move into the product development phase. 660. During the product development phase, Converse's Product Development team turns these designs and materials into physical prototypes and fmal samples. During this phase, footwear and materials engineers use rapid prototyping equipment, fabric looms, digital printers, and other shoe construction equipment in North Andover to physically manufacture new materials and prototypes of the new Converse Shoes. The new Converse Shoes are then evaluated and tested for comfort, safety, durability, and manufacturability, among other things. Once a new Converse Shoe is finalized in North Andover, the Product Development team develops a technical package, including information about manufacturing specifications, materials, and engineering, and works with the Converse Technical Services office in Asia to put the new Converse Shoe into production. 175 661. Throughout these three stages, Converse's Product Management, Product Design, and Product Development teams receive intensive support and assistance from other teams and activities in North Andover. Confidential Exhibit 5, the Declaration of Steven Monti, provides additional details on Converse's domestic design and development of Converse Shoes and how other Converse activities support Converse Shoes. 2. Converse's Activities and Investments Satisfy the Economic Prong of the Domestic Industry 662. Converse conducts virtually all of its production-related research, materials and shoe development, testing, and shoe sample construction activities in the United States. Converse makes significant investments in plant and equipment, employs significant labor and capital, and makes substantial investments in the exploitation of the Asserted Trademarks in performing these essential product-focused activities. Based on these activities and Converse's significant and substantial investments in support of these activities, an industry relating to Converse Shoes exists in the United States, as required by 19 U.S.C. §§ 1337(a)(1) and (a)(2)- (3). 663. First, Converse has made, and continues to make, significant investments in plant and equipment. Converse owns and utilizes valuable, important tools and equipment, including, for example, its rapid prototyping equipment, fabric looms, knitting equipment, digital printers, computers, and design software, all of which are critical and necessary for the design and development work Converse conducts on the Converse Shoes. Furthermore, Converse has multiple facilities across the United States, including its headquarters in North Andover and excluding its retail stores and distribution centers, that support Converse Shoes. These facilities include creative space, office space, and warehousing space. To operate these facilities, Converse incurs, for example, expenses for rent, utilities, and maintenance. Paragraphs 34 to 44 176 of Confidential Exhibit 5 set forth further details on Converse's domestic investment in plant and equipment related to Converse Shoes. 664. Second, Converse has employed, and continues to employ, significant labor and capital in the United States to conduct design, production-related, and support activities. Converse currently employs hundreds of people in the United States, excluding its retail store and distribution center operations. Most of these U.S. employees are involved in the three main stages of production-related activities, with additional employees involved in product support activities, such as sales and marketing. These skilled personnel include, for example, art directors, graphic designers, product designers, product developers, materials engineers, footwear engineers, and product managers, all of whom are heavily engaged in domestic activities that support the creation of Converse Shoes. Converse additionally employs significant capital to support these employees' domestic design, production-related, and support activities directed to Converse Shoes. Paragraphs 45 to 52 of Confidential Exhibit 5 set forth further details on Converse's domestic employment of labor and capital related to Converse Shoes. 665. Third, Converse has made, and continues to make, a substantial investment in the exploitation of the Asserted Trademarks. Converse conducts critical production-related engineering and research and development on Converse Shoes, all of which showcase the Asserted Trademarks. Furthermore, Converse licenses third-party intellectual property as part of "collaboration" activities in the United States, teaming with national and international artists, musicians, fashion leaders, and other icons. Converse, as part of these "collaboration" activities, licenses third-party intellectual property and rights of publicity to further exploit the Asserted Trademarks through new and interesting iterations of Converse Shoes. These collaboration initiatives, in addition to the long-term innovation, brand management, brand protection, and 177 consumer and market intelligence work performed by the Product Management, Product Design, and Product Development teams, represent a substantial investment by Converse in the exploitation of the Asserted Trademarks. Paragraphs 53 to 63 of Confidential Exhibit 5 set forth further details regarding Converse's domestic investment in the exploitation of the Asserted Trademarks. 666. Finally, Converse's investments in plant and equipment, employment oflabor and capital, and investments in exploitation of the Asserted Trademarks are significant and/or substantial, both quantitatively and qualitatively. The quantitative significance of Converse's domestic investments can be seen in its impact in reducing Converse's net income. See Confidential Exhibit 5 ,-r,-r 43, 52. Converse's domestic activities and associated investments are also qualitatively significant because they are essential to Converse's business and to the creation of Converse Shoes. The product management, product design, product development, engineering, and other qualifying activities that Converse conducts in the United States would not be possible without Converse's significant and/or substantial domestic investments. See Confidential Exhibit 5 ,-r,-r 44-45, 53, 64-65. IX. INJURY TO THE DOMESTIC INDUSTRY 667. An industry relating to Converse Shoes bearing the Asserted Trademarks exists in the United States as required under 19 U.S.C. § 1337(a)(l)(A)(i) and as set forth in Section VIII and Confidential Exhibit 5. The Respondents' unlawful importation and sale of the Accused Products has the threat or effect of causing substantial injury to the Converse domestic industry by reason of (a) the likelihood of consumer confusion and dilution of the Asserted Trademarks; (b) diminishment of Converse's brand equity and goodwill associated with the Asserted Trademarks by reason of that consumer confusion and dilution; (c) actual lost sales, conceivable 178 loss of sales, and the likelihood of future lost sales ofConverse Shoes to Accused Products, as well as actual and threatened price underselling; and (d) significant Converse expenditures to enforce and protect the Asserted Trademarks and to fight the diminution of Converse's brand equity and goodwill caused by domestic sales of the Accused Products. 668. First, unauthorized use of the Asserted Trademarks in connection with the Accused Products is likely to lead to consumer confusion and dilution of the Asserted Trademarks. This confusion and dilution diminishes or threatens to diminish the capacity of the Asserted Trademarks to distinguish Converse goods, constituting substantial present and likely future injury to the Converse domestic industry. 669. Second, unauthorized use of the Asserted Trademarks in connection with the Accused Products has caused substantial harm and is likely to cause substantial future harm to Converse's brand equity and the goodwill associated with the brand. U.S. consumers strongly associate the Asserted Trademarks with Converse. Converse has invested heavily in use of the Asserted Trademarks to build the Converse brand and relies on the continued distinctiveness of the Asserted Trademarks to identify Converse Shoes to consumers. The Respondents' unauthorized use of the Asserted Trademarks, and the resulting consumer confusion and association of Accused Products with the Asserted Trademarks, damages and diminishes, and threatens to damage and diminish, the brand equity and goodwill associated with Converse and Converse Shoes. This harm to Converse's brand equity and goodwill constitutes substantial present and likely future injury to the Converse domestic industry. 670. Third, the unauthorized use of the Asserted Trademarks has enabled the Respondents to capture U.S. shoe sales at the expense of Converse Shoes, and is likely to lead to additional lost Converse Shoe sales in the future. The Accused Products compete with Converse 179 Shoes in the United States in many different channels of distribution and at many different price points. Exhibit 5 ｾｾ＠ 10- 12. On information and belief, and as discussed in more detail below with respect to each of the Respondents, Converse has lost sales to Accused Products bearing one or more of the Asserted Trademarks. In many cases, Converse has lost sales to lower-priced Accused Products, which undersell Converse Shoes. In other cases, Converse loses sales to Accused Products that bear one or more of the Asserted Trademarks even in the absence of underselling. Specific examples of Converse sales lost to Accused Products, both by reason of lower pricing and the similarity of Converse Shoes to the Accused Products, include statements by U.S. purchasers of the Accused Products made in comments posted to retail websites on the Internet and product reviews. Lower prices charged for many of the Accused Products have also led to downward pressure on Converse pricing, reducing the company's sales margins and profits. Converse believes that most, if not all, sales of the Accused Products are sales at the expense of Converse Shoes, given the likelihood of consumer confusion and improper association between the Accused Products and the Asserted Trademarks. These lost sales, and likely future lost sales, are causing and threaten to cause substantial present and likely future injury to Converse's domestic industry. 671. Fourth, Converse has made significant expenditures, and is likely to make significant expenditures in the future, to ensure that consumers can rely on the Asserted Trademarks as distinctive identifiers ofhigh-quality Converse Shoes, and to protect Converse's goodwill in the Asserted Trademarks. These Converse expenditures to protect U.S. consumers constitute substantial injury and the threat of substantial injury. See Section VIII, supra. 672. These actual and threatened lost sales, underselling Converse Shoes by infringing and dilutive Accused Products, confusion and dilution of the Asserted Trademarks, and erosion 180 of associated Converse goodwill- in conjunction with evidence of substantial foreign manufacturing capacity with the ability and economic motivation to manufacture infringing products for importation and sale in the United States (as discussed in Section XI, infra) - substantially injure and threaten to substantially injure the domestic industry. A. Skechers 673. Skechers, through the unauthorized use of the Converse Midsole Trademark, has created a likelihood of confusion among U.S. consumers and likelihood of dilution of the Converse Midsole Trademark. This unfair competition, along with price underselling, has caused Converse to lose shoe sales to Skechers and threatens to cause lost sales in the future. In addition, the unauthorized use of the Converse Midsole Trademark by Skechers is harming or threatening to harm the distinctiveness and selling power of the Converse Midsole Trademark, thereby diminishing the goodwill associated with the Converse brand. These actual or threatened lost sales, the likelihood of confusion and/or dilution, and the harm to the Converse brand and associated goodwill are causing or threaten to cause substantial injury to Converse's domestic industry. 674. Comments made by purchasers on Skechers' website, reviewing the accused Skechers "Twinkle Toes" shoe, demonstrate actual and likely confusion and association between Skechers' Accused Products and Converse Shoes, actual sales lost by Converse to Skechers' Accused Products, and actual underselling: "My 3 1/2 yr old daughter loves these shoes, she asked for them because she kept seeing them advertised on TV. They are similar to the old school 'Chuck Taylor' converse style [sic], and just very cute w/the ping [sic] bling stones." Exhibit 195. 181 675. Converse has lost sales and market share to Skechers' Accused Products and is likely to lose additional sales and market share in the future. Skechers promotes and sells its Accused Products at many of the same retailers as Converse, including Nordstrom, and online at Zappos.com and Shoebuy.com. See Section IV.A, supra. Internal Converse market reports, prepared in the ordinary course of business, describe sales lost by Converse to infringing Skechers shoes and other competitive harms. See e.g. Exhibit 196C. In addition, Converse faces underselling from Skechers' Accused Products. For example, the Skechers "Bobs Utopia" shoe has sold at $25, underselling comparable Converse Shoes, which ordinarily sell for at least, approximately $50. See Exhibit 23 ,-r 40. Given the substantial similarity between the Accused Products and Converse Shoes, each sale of Skechers' Accused Products represents a lost Converse sale. B. Walmart 676. Walmart, through the unauthorized use of the Converse Midsole Trademark, has created a likelihood of confusion among U.S. consumers and likelihood of dilution of the Converse Midsole Trademark. This unfair competition has caused Converse to lose shoe sales to Walmart and threatens to cause lost sales in the future. In addition, the unauthorized use of the Converse Midsole Trademark by Walmart is harming or threatening to harm the distinctiveness and selling power of the Converse Midsole Trademark, thereby diminishing the goodwill associated with the Converse brand. These actual or threatened lost sales, the likelihood of confusion and/or dilution, and the harm to the Converse brand and associated goodwill are causing or threaten to cause substantial injury to Converse's domestic industry. 677. Comments made by purchasers on Walmart's website, reviewing the accused Walmart "Faded Glory" shoe, demonstrate actual and likely confusion and association between 182 Walmart's Accused Products and Converse Shoes, actual sales lost by Converse to Walmart's Accused Products, and actual underselling. See Exhibit 28. For example, one reviewer noted "people can't tell there not chucks [sic]," while another noted, "[t]hese shoes look and feel just like Chuck Taylor's .... but without the Converse price tag. Such a great deal I bought one pair in black and one in light grey." Id. Yet another commented that "[the Faded Glory shoes] look like the real Converse sneakers. Will be buying a couple more pairs since these shoes won't go out of style." !d. Another commented, "I've seen Converse shoes for up to 4x as much as these cost but these could easily pass the same, even though they're way less expensive!" Id. 678. Converse has lost sales and market share to Walmart's Accused Products, and is likely to lose additional sales and market share in the future. Internal Converse market reports, prepared in the ordinary course of business, describe sales lost by Converse to infringing shoes and other competitive harms. See, e.g., Exhibit 196C. Like Converse, Walmart promotes and sells shoes through its own stores and on the Internet. See Section IV.B, supra. Internal Converse market reports, prepared in the ordinary course ofbusiness, describe sales lost by Converse to infringing shoes and other competitive harms. See, e.g., Exhibit 196C. In addition, Converse faces underselling from Walmart's Accused Products. Walmart's Accused Products have sold at $12.93, underselling comparable Converse Shoes, which ordinarily sell for at least, approximately $50. See Exhibit 23 ｾＵＶＮ＠ Converse Shoes sold at Target sell for at least, approximately $34.99. Given the substantial similarity between the Accused Products and Converse Shoes, each sale ofWalmart's Accused Products represents a lost Converse sale. C. Kitson 679. Kitson, through the unauthorized use of the Converse Midsole Trademark, has created a likelihood of confusion among U.S. consumers and likelihood of dilution of the 183 Converse Midsole Trademark. This unfair competition has caused Converse to lose shoe sales to Kitson and threatens to cause lost sales in the future. In addition, the unauthorized use of the Converse Midsole Trademark by Kitson is harming or threatening to harm the distinctiveness and selling power of the Converse Midsole Trademark, thereby diminishing the goodwill associated with the Converse brand. For example, a pair of accused Kitson shoes, posted for sale on the website Polyvore.com, was described by a reviewer as "Kitson style Converse." See, e.g., Exhibit 197. These actual or threatened lost sales, the likelihood of confusion and/or dilution, and the harm to the Converse brand and associated goodwill are causing or threaten to cause substantial injury to Converse's domestic industry. 680. Converse has lost sales and market share to Kitson's Accused Products, and is likely to lose additional sales and market share in the future. Like Converse, Kitson promotes and sells shoes through its own stores and on the Internet. Section IV.C, supra. Internal Converse market reports, prepared in the ordinary course ofbusiness, describe sales lost by Converse to infringing shoes and other competitive harms. See, e.g., Exhibit 196C. In addition, Converse faces underselling from Kitson's Accused Products. Kitson's Accused Products have sold as low as $28, underselling comparable Converse Shoes, which ordinarily sell for at least, approximately $55. See Exhibit 41. Given competition between Kitson and Converse Shoes, and the substantial similarity between the Accused Products and Converse Shoes, each sale of Kitson's Accused Products represents a lost Converse sale. D. Aldo 681. Aldo, through the unauthorized use of the Converse Midsole Trademark, has created a likelihood of confusion among U.S. consumers and likelihood of dilution of the Converse Midsole Trademark. This unfair competition, as well as price underselling, has caused 184 Converse to lose shoe sales to Aldo and threatens to cause lost sales in the future. In addition, the unauthorized use of the Converse Midsole Trademark by Aldo is harming or threatening to harm the distinctiveness and selling power of the Converse Midsole Trademark, thereby diminishing the goodwill associated with the Converse brand. These actual or threatened lost sales, the likelihood of confusion and/or dilution, and the harm to the Converse brand and associated goodwill are causing or threaten to cause substantial injury to Converse's domestic industry. 682. Comments made by a reviewer on the "Siblings with Style" website of Aldo shoes demonstrate actual and likely confusion and association between Aldo's Accused Products and Converse Shoes. In reviewing the Aldo shoe, the reviewer notes that "the black captoe echoes the classic Jack Purcells or Converse Chuck Taylor sneaker, just in a different shade and on a slightly beefed up model." Exhibit 49. 683. Converse has lost sales and market share to Aldo's Accused Products, and is likely to lose additional sales and market share in the future. Aldo, like Converse, promotes and sells its Accused Products through its own retail stores in the United States and the Internet. See Section IV.D, supra. Internal Converse market reports, prepared in the ordinary course of business, also describe sales lost by Converse to infringing shoes and other competitive harms. See, e.g., Exhibit 196C. Aldo's Accused Products also undersell Converse Shoes. For example, Aldo's Accused Products have sold at $54.98, underselling comparable Converse Shoes. See Exhibit 48 ｾ＠ 2. Given the substantial similarity between the Accused Products and Converse Shoes, each sale of Aldo's Accused Products represents a lost Converse sale. 185 E. Brian Lichtenberg 684. Brian Lichtenberg, through the unauthorized use of the Converse Midsole Trademark, has created a likelihood of confusion among U.S. consumers and likelihood of dilution of the Converse Midsole Trademark. This unfair competition has caused Converse to lose shoe sales to Brian Lichtenberg and threatens to cause lost sales in the future. In addition, the unauthorized use of the Converse Midsole Trademark by Brian Lichtenberg is harming or threatening to harm the distinctiveness and selling power of the Converse Midsole Trademark, thereby diminishing the goodwill associated with the Converse brand. These actual or threatened lost sales, the likelihood of confusion and/or dilution, and the harm to the Converse brand and associated goodwill are causing or threaten to cause substantial injury to Converse's domestic industry. 685. Converse has lost sales and market share to Brian Lichtenberg's Accused Products, and is likely to lose additional sales and market share in the future. Internal Converse market reports, prepared in the ordinary course of business, describe sales lost by Converse to infringing shoes and other competitive harms. See, e.g., Exhibit 196C. In addition, Converse faces underselling from Brian Lichtenberg's Accused Products. Brian Lichtenberg's Accused Products have sold as low as $28, underselling comparable Converse Shoes, which ordinarily sell for at least, approximately $55. See Section IV.E. Given competition between Brian Lichtenberg's Accused Products and certain Converse Shoes, and the substantial similarity between the Accused Products and Converse Shoes, each sale of Brian Lichtenberg's Accused Products represents a lost Converse sale. F. Gotta Flurt 686. Gotta Flurt, through the unauthorized use of the Converse Midsole Trademark, has created a likelihood of confusion among U.S. consumers and likelihood of dilution of the 186 Converse Midsole Trademark. This unfair competition has caused Converse to lose shoe sales to Gotta Flurt and threatens to cause lost sales in the future. In addition, the unauthorized use of the Converse Midsole Trademark by Gotta Flurt is harming or threatening to harm the distinctiveness and selling power of the Converse Midsole Trademark, thereby diminishing the goodwill associated with the Converse brand. These actual or threatened lost sales, the likelihood of confusion and/or dilution, and the harm to the Converse brand and associated goodwill are causing or threaten to cause substantial injury to Converse's domestic industry. 687. Comments made by purchasers on Amazon's website, reviewing an accused Gotta Flurt shoe, demonstrate actual and likely confusion and association between Gotta Flurt's Accused Products and Converse Shoes. Reviewing the Gotta Flurt "Lenwood Fashion Sneaker," purchasers described the infringing product as "[ s ]imilar to Converse, and not clunky or heavy" and having a "[g]reat [C]onverse look with a twist!" Exhibit 198. Another consumer asked a question on Yahoo Answers asking how Gotta Flurt's sizing for shoes compares to Converse as she was "ordering a pair of sequin [sic] [G]otta [F]lurt sneakers and they're a lot like [C]onverse." Exhibit 199. This consumer explained that they "wear a 7 in [C]onverse but a 7.5 in other shoes .... are [Gotta Flurt sneakers] close enough to [C]onverse to get 7s?'' Id. 688. Converse has lost sales and market share to Gotta Flurt's Accused Products, and is likely to lose additional sales and market share in the future. Gotta Flurt competes with Converse in many channels of distribution, and promotes and sells its Accused Products at DSW retail stores, and online at Overstock.com, 6pm.com, and Zappos.com. See Section IV.F, supra. In reviewing an infringing Gotta Flurt shoe, for example, a consumer states: "[m]y 13 year old daughter was wanting a pair of Converse in black. I found these a lot cheaper and I must admit I'm a prime snob .... I'm hoping they last we long as regular converse [sic]." Exhibit 62. 187 Internal Converse market reports, prepared in the ordinary course of business, also describe sales lost by Converse to infringing shoes and other competitive harms. See, e.g., Exhibit 196C. In addition, Converse is suffering from price competition from Gotta Flurt's Accused Products, which have sold at prices comparable to Converse Shoes for kids. See Exhibit 23 ｾ＠ 4. Given the substantial similarity between the Accused Products and Converse Shoes, each sale of Gotta Flurt's Accused Products represents a lost Converse sale. G. Dioniso 689. Dioniso, through the unauthorized use of the Converse Midsole Trademark, has created a likelihood of confusion among U.S. consumers and likelihood of dilution of the Converse Midsole Trademark. This unfair competition has caused Converse to lose shoe sales to Dioniso and threatens to cause lost sales in the future. In addition, the unauthorized use of the Converse Midsole Trademark by Dioniso is harming or threatening to harm the distinctiveness and selling power of the Converse Midsole Trademark, thereby diminishing the goodwill associated with the Converse brand. These actual or threatened lost sales, the likelihood of confusion and/or dilution, and the harm to the Converse brand and associated goodwill are causing or threaten to cause substantial injury to Converse's domestic industry. 690. Advertisements by web retailers and comments by bloggers demonstrate actual and likely confusion and association between Dioniso 's Accused Products and Converse Shoes. For example, the Lanecrawford.com online retailer states that Dioniso's "focus is on the customization of the vintage Converse sneaker." Exhibit 200. Another online store described a pair of accused Dioniso shoes as "Vintage High All Star Converse." Exhibit 201. Online bloggers have also noted that Dioniso's Accused Products imitate Converse products: one blogger commented that Dioniso shoes were "[v ]ery similar if not identical, to a normal pattern 188 [C]onverse." Exhibit 202. Similarly, a consumer on Twitter, the social media platform, described a pair of infringing Dioniso shoes as "chucks." Exhibit 203. The treatment ofDioniso products by online retailers and bloggers demonstrates actual and likely confusion and association between Dioniso's Accused Products and Converse Shoes, and actual lost Converse sales, and the threat oflost sales, to Dioniso' s Accused Products. 691. Converse has lost sales and market share to Dioniso' s Accused Products, and is likely to lose additional sales and market share in the future. Like Converse, Dioniso promotes and sells shoes through its own stores and on the Internet. See Section IV.G, supra. One blogger advised readers that "[i]fyou are looking for a pair of futuristic Converse, then [Dioniso shoes] should be on your must buy list." Exhibit 204. Internal Converse market reports, prepared in the ordinary course of business, describe sales lost by Converse to infringing shoes and other competitive harms. See, e.g., Exhibit 196C. Given the substantial similarity between the Accused Products and Converse Shoes, each sale ofDioniso's Accused Products represents a lost Converse sale. H. Edamame 692. Edamame, through the unauthorized use of the Converse Midsole Trademark, has created a likelihood of confusion among U.S. consumers and likelihood of dilution of the Converse Midsole Trademark. This unfair competition has caused Converse to lose shoe sales to Edamame and threatens to cause lost sales in the future. In addition, the unauthorized use of the Converse Midsole Trademark by Edamame is harming or threatening to harm the distinctiveness and selling power of the Converse Midsole Trademark, thereby diminishing the goodwill associated with the Converse brand. These actual or threatened lost sales, the likelihood of 189 confusion and/or dilution, and the harm to the Converse brand and associated goodwill are causing or threaten to cause substantial injury to Converse's domestic industry. 693. Advertisements by web retailers and comments by bloggers demonstrate actual and likely confusion and association between the Edamame Accused Products and Converse Shoes. For example, in postings on eBay offering to sell second-hand Edamame shoes, the Accused Products are described as "Converse Shoes" or "Chuck Taylor Shoes." See e.g., Exhibit 205; Exhibit 206. 694. Converse has lost sales and market share to Edamame's Accused Products, and is likely to lose additional sales and market share in the future. Edamame sells the Accused Products at retail stores in the United States and on the Internet, competing with Converse Shoes sold through retail stores such as Sears. See Section IV.H, supra. Internal Converse market reports, prepared in the ordinary course of business, also describe sales lost by Converse to infringing shoes and other competitive harms. See, e.g., Exhibit 196C. In addition, Converse faces underselling from Edamame's Accused Products. Edamame's Accused Products have sold at approximately $22, underselling comparable Converse Shoes for kids, which ordinarily sell for at least, approximately $35. See Exhibit 23 ｾ＠ 6. Given the substantial similarity between the Accused Products and Converse Shoes, each sale ofEdamame's Accused Products represents a lost Converse sale. I. Esquire 695. Esquire, through the unauthorized use of the Asserted Trademarks, has created a likelihood of confusion among U.S. consumers and likelihood of dilution of the Asserted Trademarks. This unfair competition, along with price underselling, has caused Converse to lose shoe sales to Esquire, and threatens to cause lost sales in the future. In addition, the unauthorized 190 use of the Asserted Trademarks by Esquire is harming or threatening to harm the distinctiveness and selling power of the Asserted Trademarks, thereby diminishing the goodwill associated with the Converse brand. These actual or threatened lost sales, the likelihood of confusion and/or dilution, and the harm to the Converse brand and associated goodwill are causing or threaten to cause substantial injury to Converse's domestic industry. 696. Esquire's Accused Products, on information and belief, have been offered for sale in the United States at trade shows. These shoes, when sold in the United States, are likely to lead to lost Converse shoe sales and market share in the future. Internal Converse market reports, prepared in the ordinary course of business, describe sales lost by Converse to infringing shoes and other competitive harms. See, e.g., Exhibit 196C. Esquire promotes and sells its Accused Products at trade shows in the United States, including the WSA show in Las Vegas, NV. See Section IV.I, supra. Given the substantial similarity between the Accused Products and Converse Shoes, each sale ofEsquire's Accused Products likely represents a lost Converse sale. J. FILA 697. FILA, through the unauthorized use of the Converse Midsole Trademark, has created a likelihood of confusion among U.S. consumers and likelihood of dilution of the Converse Midsole Trademark. This unfair competition, along with price underselling, has caused Converse to lose shoe sales to FILA, and threatens to cause lost sales in the future. In addition, the unauthorized use of the Converse Midsole Trademark by FILA is harming or threatening to harm the distinctiveness and selling power of the Converse Midsole Trademark, thereby diminishing the goodwill associated with the Converse brand. These actual or threatened lost sales, the likelihood of confusion and/or dilution, and the harm to the Converse 191 brand and associated goodwill are causing or threaten to cause substantial injury to Converse's domestic industry. 698. Comments made by purchasers on Amazon's website, reviewing the accused FILA shoe demonstrate actual and likely confusion and association between FILA's Accused Products and Converse Shoes. In reviewing an accused FILA shoe, for example, a customer stated "[w ]anted to cheap out instead of getting a replacement for my old converse shoes which are about $40. These shoes are much wider, the white tip part is too big and feels really flimsy. Just get converses [sic]." Exhibit 207. 699. Converse has lost sales and market share to FILA's Accused Products, and is likely to lose additional sales and market share in the future. FILA sells the Accused Products at retail stores in the United States and on the Internet, competing with Converse Shoes sold through retail stores such as Saks Fifth A venue and Sears. See Section IV.J, supra. Internal Converse market reports, prepared in the ordinary course ofbusiness, also describe sales lost by Converse to infringing shoes and other competitive harms. See, e.g., Exhibit 196C. In addition, Converse faces underselling from FILA Accused Products. FILA's Accused Products have sold for $21.90, underselling comparable Converse Shoes, which ordinarily sell for at least, approximately $50. See Exhibit 23 ｾ＠ 8. Given the substantial similarity between the Accused Products and Converse Shoes, each sale of FILA's Accused Products likely represents a lost Converse sale. K. Fortune Dynamic 700. Fortune Dynamic, through the unauthorized use of the Converse Midsole Trademark, has created a likelihood of confusion among U.S. consumers and likelihood of dilution of the Converse Midsole Trademark. This unfair competition, along with price 192 underselling, has caused Converse to lose shoe sales to Fortune Dynamic, and threatens to cause lost sales in the future. In addition, the unauthorized use of the Converse Midsole Trademark by Fortune Dynamic is harming or threatening to harm the distinctiveness and selling power of the Converse Midsole Trademark, thereby diminishing the goodwill associated with the Converse brand. These actual or threatened lost sales, the likelihood of confusion and/or dilution, and the harm to the Converse brand and associated goodwill are causing or threaten to cause substantial injury to Converse's domestic industry. 701. Converse has lost sales and market share to Fortune Dynamic's Accused Products, and is likely to lose additional sales and market share in the future. Like Converse, Fortune Dynamic sells the Accused Products at retail stores in the United States and on the Internet. See Section IV.K, supra. Internal Converse market reports, prepared in the ordinary course of business, also describe sales lost by Converse to infringing shoes and other competitive harms. See, e.g., Exhibit 196C. In addition, Converse faces underselling from Fortune Dynamic's Accused Products. Fortune Dynamic's Accused Products have sold as low as $24.64, underselling comparable Converse Shoes, which ordinarily sell for at least, approximately $50. See Exhibit 23 ,-r 10. Given the substantial similarity between the Accused Products and Converse Shoes, each sale ofFortune Dynamic's Accused Products represents a lost Converse sale. L. Gina Group 702. Gina Group, through the unauthorized use of the Converse Midsole Trademark, has created a likelihood of confusion among U.S. consumers and likelihood of dilution of the Converse Midsole Trademark. This unfair competition, along with price underselling, has caused Converse to lose shoe sales to Gina Group, and threatens to cause lost sales in the future. 193 In addition, the unauthorized use of the Converse Midsole Trademark by Gina Group is harming or threatening to harm the distinctiveness and selling power of the Converse Midsole Trademark, thereby diminishing the goodwill associated with the Converse brand. These actual or threatened lost sales, the likelihood of confusion and/or dilution, and the harm to the Converse brand and associated goodwill are causing or threaten to cause substantial injury to Converse's domestic industry. 703. Converse has lost sales and market share to Gina Group's Accused Products, and is likely to lose additional sales and market share in the future. Like Converse, Gina Group sells the Accused Products at retail stores in the United States and on the Internet. See Section IV.L, supra. Internal Converse market reports, prepared in the ordinary course of business, also describe sales lost by Converse to infringing shoes and other competitive harms. See, e.g., Exhibit 196C. In addition, Converse faces underselling from Gina Group's Accused Products. Gina Group's Accused Products have sold as low as $8.99, underselling comparable Converse Shoes for kids, which ordinarily sell for at least, approximately $35. See Exhibit 23 ｾ＠ 12. Given the substantial similarity between the Accused Products and Converse Shoes, each sale of Gina Group's Accused Products represents a lost Converse sale. M. H&M 704. H & M, through the unauthorized use of the Converse Midsole Trademark, has created a likelihood of confusion among U.S. consumers and likelihood of dilution of the Converse Midsole Trademark. This unfair competition, along with price underselling, has caused Converse to lose shoe sales to H & M and threatens to cause lost sales in the future. In addition, the unauthorized use of the Converse Midsole Trademark by H & M is harming or threatening to harm the distinctiveness and selling power of the Converse Midsole Trademark, 194 thereby diminishing the goodwill associated with the Converse brand. These actual or threatened lost sales, the likelihood of confusion and/or dilution, and the harm to the Converse brand and associated goodwill are causing or threaten to cause substantial injury to Converse's domestic industry. 705. Evidence of actual and likely confusion and association between H & M's Accused Products and Converse Shoes includes listings on secondary market websites such as Poshmark.com and Ebay.com that advertise H & M's Accused Products as "Converse Style" or "Converse Like" shoes. See Exhibit 208; Exhibit 209. These postings clearly demonstrate actual and likely confusion and association between H & M' s Accused Products and Converse. 706. Converse has lost sales and market share to H & M's Accused Products, and is likely to lose additional sales and market share in the future. Like Converse, H & M sells the Accused Products at its retail stores and on the Internet. See Section IV.M, supra. Internal Converse market reports, prepared in the ordinary course ofbusiness, also describe sales lost by Converse to infringing shoes and other competitive harms. See, e.g., Exhibit 196C. In addition, Converse faces underselling from H & M's Accused Products. H & M's Accused Products have sold as low as $12.95, underselling comparable Converse Shoes for kids, which ordinarily sell for at least, approximately $35. See Exhibit 23 ,-r 14. Given the substantial similarity between the Accused Products and Converse Shoes, each sale ofH & M's Accused Products represents a lost Converse sale. N. ASH 707. ASH, through the unauthorized use of the Converse Midsole Trademark, has created a likelihood of confusion among U.S. consumers and likelihood of dilution of the Converse Midsole Trademark. This unfair competition, along with price underselling, has 195 caused Converse to lose shoe sales to ASH and threatens to cause lost sales in the future. In addition, the unauthorized use of the Converse Midsole Trademark by ASH is harming or threatening to harm the distinctiveness and selling power of the Converse Midsole Trademark, thereby diminishing the goodwill associated with the Converse brand. These actual or threatened lost sales, the likelihood of confusion and/or dilution, and the harm to the Converse brand and associated goodwill are causing or threaten to cause substantial injury to Converse's domestic industry. 708. Comments made by purchasers on Amazon's website, reviewing the infringing ASH women's shoe, demonstrate actual and likely confusion and association between ASH's Accused Products and Converse Shoes, and actual sales lost by Converse to ASH's Accused Products. In reviewing an accused ASH shoe, for example, a customer stated ''[y]es I have cheated on Converse .... I saw [the ASH shoes] in a photo when I was innocently looking at Converse pictures, and after a little investigation, discovered their identity and purchased them." Exhibit 21 0. 709. Converse has lost sales and market share to ASH's Accused Products, and is likely to lose additional sales and market share in the future. ASH promotes and sells its Accused Products at ASH retail stores, Bloomingdales retail stores, and Nordstrom retail stores, and online at Zappos.com. See Section IV.N, supra. Internal Converse market reports, prepared in the ordinary course of business, also describe sales lost by Converse to infringing shoes and other competitive harms. See, e.g., Exhibit 196C. In addition, Converse is suffering from price competition from ASH's Accused Products, which have sold at prices comparable to certain special edition Converse Shoes. See Exhibit 23 ｾ＠ 16. Given the substantial similarity between 196 the Accused Products and Converse Shoes, each sale of ASH's Accused Products represents a lost Converse sale. 0. Skeanie 710. Skeanie, through the unauthorized use ofthe Asserted Trademarks, has created a likelihood of confusion among U.S. consumers and likelihood of dilution of the Asserted Trademarks. This unfair competition, including price underselling, has caused Converse to lose shoe sales to Skeanie and threatens to cause lost sales in the future. In addition, the unauthorized use of the Asserted Trademarks by Skeanie is harming or threatening to harm the distinctiveness and selling power of the Asserted Trademarks, thereby diminishing the goodwill associated with the Converse brand. These actual or threatened lost sales, the likelihood of confusion and/or dilution, and the harm to the Converse brand and associated goodwill are causing or threaten to cause substantial injury to Converse's domestic industry. 711. Evidence of actual and likely confusion and association between Skeanie's Accused Products and Converse Shoes includes listings on online retail websites such as Babybootique.com, which offers for sale a pair of Skeanie shoes described as"[v]ery similar to the [ C]onverse design." Exhibit 211. 712. Converse has lost sales and market share to Skeanie's Accused Products, and is likely to lose additional sales and market share in the future. Like Converse, Skeanie sells the Accused Products at retail stores in the United States and on the Internet. See Section IV.O, supra. Internal Converse market reports, prepared in the ordinary course of business, describe sales lost by Converse to infringing shoes and other competitive harms. See, e.g., Exhibit 196C. In addition, Converse faces underselling from Skeanie's Accused Products. Skeanie's Accused Products have sold as low as approximately $17.50, underselling comparable Converse Shoes for 197 kids, which ordinarily sell for at least, approximately $35. See Exhibit 23 ｾ＠ 38. Given the substantial similarity between the Accused Products and Converse Shoes, each sale ofSkeanie's Accused Products represents a lost Converse sale. P. Ed Hardy 713. Ed Hardy, through the unauthorized use of the Converse Midsole Trademark, has created a likelihood of confusion among U.S. consumers and likelihood of dilution of the Converse Midsole Trademark. This unfair competition, including underselling, has caused Converse to lose shoe sales to Ed Hardy and threatens to cause lost sales in the future. In addition, the unauthorized use of the Converse Midsole Trademark by Ed Hardy is harming or threatening to harm the distinctiveness and selling power of the Converse Midsole Trademark, thereby diminishing the goodwill associated with the Converse brand. These actual or threatened lost sales, the likelihood of confusion and/or dilution, and the harm to the Converse brand and associated goodwill are causing or threaten to cause substantial injury to Converse's domestic industry. 714. Comments made by purchasers on Amazon's website, reviewing an accused Ed Hardy shoe, demonstrate actual and likely confusion and association between Ed Hardy's Accused Products and Converse Shoes. In reviewing the Ed Hardy shoe, for example, a customer stated "I've always been a converse [sic] girl so I love the look and feel of these." Exhibit 212. 715. Converse has also lost sales and market share to Ed Hardy's Accused Products, and is likely to lose additional sales and market share in the future. Ed Hardy promotes and sells its Accused Products at DSW retail stores, and online at Overstock. com and Designerimports.com, and Converse faces price competition from the Accused Products. See 198 Section IV.P, supra. Internal Converse market reports, prepared in the ordinary course of business, also describe sales lost by Converse to infringing shoes and other competitive harms. See, e.g., Exhibit 196C. In addition, Converse faces price underselling from Ed Hardy's Accused Products. Ed Hardy's Accused Products have sold at $43.99, underselling comparable Converse Shoes, which ordinarily sell for at least, approximately $50. See Exhibit 23 ｾ＠ 18. Given the substantial similarity between the Accused Products and Converse Shoes, each sale of Ed Hardy's Accused Products represents a lost Converse sale. Q. Kmart 716. Kmart, through the unauthorized use ofthe Converse Midsole Trademark, has created a likelihood of confusion among U.S. consumers and likelihood of dilution of the Converse Midsole Trademark. This unfair competition, including price underselling, has caused Converse to lose shoe sales to Kmart and threatens to cause lost sales in the future. In addition, the unauthorized use of the Converse Midsole Trademark by Kmart is harming or threatening to harm the distinctiveness and selling power of the Converse Midsole Trademark, thereby diminishing the goodwill associated with the Converse brand. These actual or threatened lost sales, the likelihood of confusion and/or dilution, and the harm to the Converse brand and associated goodwill are causing or threaten to cause substantial injury to Converse's domestic industry. 717. Comments made by purchasers on the mygofer.com shopping website, reviewing the accused Kmart Joe Boxer shoe, demonstrate actual and likely confusion and association between Kmart' s Accused Products and Converse Shoes, and actual sales lost by Converse to Kmart's Accused Products. In reviewing the Joe Boxer shoe, for example, a customer stated 199 "I've gotten lots of compliments and I do like how they're like getting Chuck Taylor's [sic] for a steal." Exhibit 213. 718. Converse has lost sales and market share to Kmart's Accused Products, and is likely to lose additional sales and market share in the future. Kmart promotes and sells its Accused Products at its retail stores and on its website. See Section IV.Q, supra. Internal Converse market reports, prepared in the ordinary course ofbusiness, also describe sales lost by Converse to infringing shoes and other competitive harms. See, e.g., Exhibit 196C. In addition, Converse faces underselling from Kmart's Accused Products. Kmart's Accused Products have sold as low as $5.60, underselling comparable Converse Shoes for kids, which ordinarily sell for at least, approximately $35. See Exhibit 23 ｾ＠ 20. Converse Shoes for kids sold at Target sell for at least, approximately $21.99. Given the substantial similarity between the Accused Products and Converse Shoes, each sale ofK.mart's Accused Products represents a lost Converse sale. R. Lilly New York 719. Lilly New York, through the unauthorized use of the Asserted Trademarks, has created a likelihood of confusion among U.S. consumers and likelihood of dilution of the Asserted Trademarks. This unfair competition, including underselling, has caused Converse to lose shoe sales to Lilly New York and threatens to cause lost sales in the future. In addition, the unauthorized use of the Asserted Trademarks by Lilly New York is harming or threatening to harm the distinctiveness and selling power of the Asserted Trademarks, diminishing the goodwill associated with the Converse brand. These actual or threatened lost sales, the likelihood of confusion and/or dilution, and the harm to the Converse brand and associated goodwill are causing or threaten to cause substantial injury to Converse's domestic industry. 200 720. Evidence of actual and likely marketplace confusion and association between Lilly New York's Accused Products with Converse includes consumer postings on social networks. For example, a consumer on Sulia.com, a social network that allows users to subscribe to and connect over topics of interest, told users that she had "been a fan of black sole Chuck Taylors F-0-R-E-V-E-R" and advised them that there are "some serious adorable knock• offs from Lilly of New York." See, e.g., Exhibit 214. This posting clearly demonstrates consumer associations between Lilly New York's Accused Products and Converse Shoes. 721. Converse has lost sales and market share to Lilly New York's Accused Products, and is likely to lose additional sales and market share in the future. Like Converse, Lilly New York sells the Accused Products at retail stores in the United States and on the Internet. See Section IV.R, supra. Internal Converse market reports, prepared in the ordinary course of business, describe sales lost by Converse to infringing shoes and other competitive harms. See, e.g., Exhibit 196C. In addition, Converse faces underselling from Lilly New York's Accused Products. Lilly New York's Accused Products have sold as low as $6.99, underselling comparable Converse Shoes for kids, which ordinarily sell for at least, approximately $35. See Exhibit 23 ,-r 22. Given the substantial similarity between the Accused Products and Converse Shoes, each sale ofLillyNew York's Accused Products represents a lost Converse sale. S. Bape 722. Bape, through the unauthorized use of the Converse Midsole Trademark, has created a likelihood of confusion among U.S. consumers and likelihood of dilution of the Converse Midsole Trademark. This unfair competition has caused Converse to lose shoe sales to Bape and threatens to cause lost sales in the future. In addition, the unauthorized use of the Converse Midsole Trademark by Bape is harming or threatening to harm the distinctiveness and 201 selling power of the Converse Midsole Trademark, thereby diminishing the goodwill associated with the Converse brand. These actual or threatened lost sales, the likelihood of confusion and/or dilution, and the harm to the Converse brand and associated goodwill are causing or threaten to cause substantial injury to Converse's domestic industry. 723. Comments made by bloggers, reviewing an accused Bape shoe, demonstrate actual and likely confusion and association between Bape's Accused Products and Converse Shoes. For example, bloggers have noted that the accused Bape "Ape Sta" shoe "makes little effort to conceal the fact that these are Converse Chuck Taylor-inspired sneakers" and "obviously takes cues from the classic Converse Chuck Taylor, but fans of the brand don't seem to mind the concept jacking, and continue to by the sneaker [sic]." Exhibit 215. Similarly, a consumer selling a pair ofBape shoes on Ebay.com described the Accused Products as "Converse Style." See, e.g., Exhibit 216. 724. Converse has lost sales and market share to Bape's Accused Products, and is likely to lose additional sales and market share in the future. Like Converse, Bape promotes and sells shoes through its own stores and on the Internet, and competes with certain special edition Converse Shoes. See Section IV.S, supra. Internal Converse market reports, prepared in the ordinary course of business, describe sales lost by Converse to infringing shoes and other competitive harms. See, e.g., Exhibit 196C. Given the substantial similarity between the Accused Products and Converse Shoes, each sale ofBape's Accused Products represents a lost Converse sale. T. OPPO 725. OPPO, through the unauthorized use of the Converse Midsole Trademark, has created a likelihood of confusion among U.S. consumers and likelihood of dilution of the 202 Converse Midsole Trademark. This unfair competition, including underselling, has caused Converse to lose shoe sales to OPPO and threatens to cause lost sales in the future. In addition, the unauthorized use of the Converse Midsole Trademark by OPPO is harming or threatening to harm the distinctiveness and selling power of the Converse Midsole Trademark, thereby diminishing the goodwill associated with the Converse brand. These actual or threatened lost sales, the likelihood of confusion and/or dilution, and the harm to the Converse brand and associated goodwill are causing or threaten to cause substantial injury to Converse's domestic industry. 726. Evidence of actual and likely confusion and association between OPPO's Accused Products and Converse Shoes can be seen on the Sears. com website, which promotes various models ofOPPO's Accused Products as "Chuck Taylor style HI top sneaker[s]" in both the title of the product and in the description. See Section IV.T, supra; Exhibit 137; Exhibit 138. As a further example, a consumer listed a pair ofOPPO shoes as "[C]onverse Chuck Taylor style Hi Top" shoes in an attempt to sell them on Ebay.com. Exhibit 217. 727. Converse has lost sales and market share to OPPO's Accused Products, and is likely to lose additional sales and market share in the future. OPPO promotes and sells its Accused Products at Sears retail stores and online at Sears.com. See Section IV.T, supra. Internal Converse market reports, prepared in the ordinary course of business, describe sales lost by Converse to infringing shoes and other competitive harms. See, e.g., Exhibit 196C. In addition, Converse faces underselling from OPPO's Accused Products. OPPO's Accused Products have sold at $17, underselling comparable Converse Shoes, which ordinarily sell for at least, approximately $55. See Exhibit 23 ,-r 26. Given the substantial similarity between the 203 Accused Products and Converse Shoes, each sale ofOPPO's Accused Products represents a lost Converse sale. U. Demonia Deviant 728. Demonia Deviant, through the unauthorized use of the Converse Midsole Trademark, has created a likelihood of confusion among U.S. consumers and likelihood of dilution of the Converse Midsole Trademark. This unfair competition, including underselling, has caused Converse to lose shoe sales to Demonia Deviant and threatens to cause lost sales in the future. In addition, the unauthorized use of the Converse Midsole Trademark by Demonia Deviant is harming or threatening to harm the distinctiveness and selling power of the Converse Midsole Trademark, thereby diminishing the goodwill associated with the Converse brand. These actual or threatened lost sales, the likelihood of confusion and/or dilution, and the harm to the Converse brand and associated goodwill are causing or threaten to cause substantial injury to Converse's domestic industry. 729. Comments made by purchasers on Amazon's website, reviewing an accused Demonia Deviant men's shoe demonstrate actual and likely confusion and association between Demonia Deviant's Accused Products and Converse Shoes, and actual sales lost by Converse to Demonia Deviant's Accused Products. In reviewing the Demonia Deviant shoe, for example, a customer stated "[g]reat shoes good price. Better than converse [sic]." Exhibit 218. 730. Converse has lost sales and market share to Demonia Deviant's Accused Products, and is likely to lose additional sales and market share in the future. Demonia Deviant promotes and sells its Accused Products at Sears retail stores, and online at Sinistersoles.com and Rivithead.com, and Converse faces competition from the Accused Products. See Section IV.U, supra. Internal Converse market reports, prepared in the ordinary course of business, also 204 describe sales lost by Converse to infringing shoes and other competitive harms. See, e.g., Exhibit 196C. In addition, Converse faces underselling from Demonia Deviant's Accused Products. Demonia Deviant's Accused Products have sold at $34.95, underselling comparable Converse Shoes, which ordinarily sell for at least, approximately $55. See Exhibit 23 ,-r 28. Given the substantial similarity between the Accused Products and Converse Shoes, each sale of Demonia Deviant's Accused Products represents a lost Converse sale. V. Ositos 731. Ositos, through the unauthorized use ofthe Converse Midsole Trademark, has created a likelihood of confusion among U.S. consumers and likelihood of dilution of the Converse Midsole Trademark. This unfair competition, including underselling, has caused Converse to lose shoe sales to Ositos and threatens to cause lost sales in the future. In addition, the unauthorized use of the Converse Midsole Trademark by Ositos is harming or threatening to harm the distinctiveness and selling power ofthe Converse Midsole Trademark, thereby diminishing the goodwill associated with the Converse brand. These actual or threatened lost sales, the likelihood of confusion and/or dilution, and the harm to the Converse brand and associated goodwill are causing or threaten to cause substantial injury to Converse's domestic industry. 732. Converse has lost sales and market share to Ositos' Accused Products, and is likely to lose additional sales and market share in the future. Like Converse, Ositos sells the Accused Products at retail stores in the United States and on the Internet and competes with Converse Shoes. See Section IV. V, supra. Internal Converse market reports, prepared in the ordinary course of business, also describe sales lost by Converse to infringing shoes and other competitive harms. See, e.g., Exhibit 196C. In addition, Converse faces underselling from 205 Ositos' Accused Products. Ositos' Accused Products have sold at $20.90, underselling comparable Converse Shoes, which ordinarily sell for at least, approximately $50. See Exhibit 23 ,-r 30. Given the substantial similarity between the Accused Products and Converse Shoes, each sale ofOsitos' Accused Products represents a lost Converse sale. W. PW 733. PW, through the unauthorized use of the Asserted Trademarks, has created a likelihood of confusion among U.S. consumers and likelihood of dilution of the Asserted Trademarks. This unfair competition, including underselling, has caused Converse to lose shoe sales to PW and threatens to cause lost sales in the future. In addition, the unauthorized use of the Asserted Trademarks by PW is harming or threatening to harm the distinctiveness and selling power of the Asserted Trademarks, thereby diminishing the goodwill associated with the Converse brand. These actual or threatened lost sales, the likelihood of confusion and/or dilution, and the harm to the Converse brand and associated goodwill are causing or threaten to cause substantial injury to Converse's domestic industry. 734. Converse has lost sales and market share to PW's Accused Products, and is likely to lose additional sales and market share in the future. Like Converse, PW sells the Accused Products at retail stores in the United States and on the Internet, competing with Converse Shoes. See Section IV. W, supra. Internal Converse market reports, prepared in the ordinary course of business, describe sales lost by Converse to infringing shoes and other competitive harms. See, e.g., Exhibit 196C. In addition, Converse faces price underselling from PW' s Accused Products. PW's Accused Products have sold at $10.99, underselling comparable Converse Shoes, which ordinarily sell for at least, approximately $50. See Exhibit 23 ,-r 32. Given the substantial 206 similarity between the Accused Products and Converse Shoes, each sale of PW' s Accused Products represents a lost Converse sale. X. Ralph Lauren 735. Ralph Lauren, through the unauthorized use ofthe Converse Midsole Trademark, has created a likelihood of confusion among U.S. consumers and likelihood of dilution of the Converse Midsole Trademark. This unfair competition, including underselling, has caused Converse to lose shoe sales to Ralph Lauren and threatens to cause lost sales in the future. In addition, the unauthorized use of the Converse Midsole Trademark by Ralph Lauren is harming or threatening to harm the distinctiveness and selling power of the Converse Midsole Trademark, thereby diminishing the goodwill associated with the Converse brand. These actual or threatened lost sales, the likelihood of confusion and/or dilution, and the harm to the Converse brand and associated goodwill are causing or threaten to cause substantial injury to Converse's domestic industry. 736. Comments made by purchasers on Amazon's website, reviewing an accused Ralph Lauren men's shoe, demonstrate actual and likely confusion and association between the Ralph Lauren Accused Products and Converse Shoes, and actual sales lost by Converse to Ralph Lauren's Accused Products. In reviewing the Ralph Lauren shoe, for example, a customer stated "[t]hese shoes are perfect for summer. Great look with shorts or jeans. Better than chucks [Converse shoes]." Exhibit 219. 737. Converse has lost sales and market share to Ralph Lauren's Accused Products, and is likely to lose additional sales and market share in the future. Ralph Lauren promotes and sells its Accused Products at its retail stores in the United States and on the Internet, and competes with Converse Shoes. See Section IV.X, supra. Internal Converse market reports, 207 prepared in the ordinary course of business, describe sales lost by Converse to infringing shoes and other competitive harms. See, e.g., Exhibit 196C. In addition, Converse faces price underselling from Ralph Lauren's Accused Products. Ralph Lauren's Accused Products have sold at $40.99, underselling comparable Converse Shoes, which ordinarily sell for at least, approximately $50. See Exhibit 23 ｾ＠ 34. Given the substantial similarity between the Accused Products and Converse Shoes, each sale ofRalph Lauren's Accused Products represents a lost Converse sale. Y. Foreversun 738. Foreversun, through the unauthorized use of the Asserted Trademarks, has created a likelihood of confusion among U.S. consumers and likelihood of dilution of the Asserted Trademarks. This unfair competition, including underselling, has caused Converse to lose shoe sales to Foreversun and threatens to cause lost sales in the future. In addition, the unauthorized use of the Asserted Trademarks by Foreversun is harming or threatening to harm the distinctiveness and selling power of the Asserted Trademarks, thereby diminishing the goodwill associated with the Converse brand. These actual or threatened lost sales, the likelihood of confusion and/or dilution, and the harm to the Converse brand and associated goodwill are causing or threaten to cause substantial injury to Converse's domestic industry. 739. Converse has lost sales and market share to Foreversun's Accused Products, and is likely to lose additional sales and market share in the future. Foreversun promotes and sells its Accused Products at retail stores in the United States and on the Internet, and competes with Converse Shoes. See Section IV.Y, supra. Internal Converse market reports, prepared in the ordinary course of business, describe sales lost by Converse to infringing shoes and other competitive harms. See, e.g., Exhibit 196C. Given the substantial similarity between the 208 Accused Products and Converse Shoes, each sale ofForeversun's Accused Products represents a lost Converse sale. Z. Shoe Shox 740. Shoe Shox, through the unauthorized use of the Asserted Trademarks, has created a likelihood of confusion among U.S. consumers and likelihood of dilution of the Asserted Trademarks. This unfair competition, including underselling, has caused Converse to lose shoe sales to Shoe Shox and threatens to cause lost sales in the future. In addition, the unauthorized use of the Asserted Trademarks by Shoe Shox is harming or threatening to harm the distinctiveness and selling power of the Asserted Trademarks, thereby diminishing the goodwill associated with the Converse brand. These actual or threatened lost sales, the likelihood of confusion and/or dilution, and the harm to the Converse brand and associated goodwill are causing or threaten to cause substantial injury to Converse's domestic industry. 741. Converse has lost sales and market share to Shoe Shox's Accused Products, and is likely to lose additional sales and market share in the future. Like Converse, Shoe Shox sells the Accused Products at retail stores in the United States and on the Internet, competing with Converse Shoes. See Section IV.Z, supra. Internal Converse market reports, prepared in the ordinary course of business, also describe sales lost by Converse to infringing shoes and other competitive harms. See, e.g., Exhibit 196C. In addition, Converse faces price underselling from Shoe Shox's Accused Products. Shoe Shox's Accused Products have sold at $6.99, underselling comparable Converse Shoes for kids, which ordinarily sell for at least, approximately $35. See Exhibit 23 ｾ＠ 36. Given the substantial similarity between the Accused Products and Converse Shoes, each sale of Shoe Shox's Accused Products represents a lost Converse sale. 209 AA. Tory Burch 742. Tory Burch, through the unauthorized use of the Converse Midsole Trademark, has created a likelihood of confusion among U.S. consumers and likelihood of dilution of the Converse Midsole Trademark. This unfair competition has caused Converse to lose shoe sales to Tory Burch and threatens to cause lost sales in the future. In addition, the unauthorized use of the Converse Midsole Trademark by Tory Burch is harming or threatening to harm the distinctiveness and selling power of the Converse Midsole Trademark, thereby diminishing the goodwill associated with the Converse brand. These actual or threatened lost sales, the likelihood of confusion and/or dilution, and the harm to the Converse brand and associated goodwill are causing or threaten to cause substantial injury to Converse's domestic industry. 743. Converse has lost sales and market share to Tory Burch's Accused Products, and is likely to lose additional sales and market share in the future. Like Converse, Tory Burch sells the Accused Products at retail stores in the United States and on the Internet, competing with Converse Shoes. See Section IV.AA, supra. Internal Converse market reports, prepared in the ordinary course of business, also describe sales lost by Converse to infringing shoes and other competitive harms. See, e.g., Exhibit 196C. In addition, Converse is suffering from price competition from the Tony Burch Accused Products, which are sold at prices comparable to certain special edition Converse Shoes. See Section II. Given the substantial similarity between the Accused Products and Converse Shoes, each sale ofTory Burch's Accused Products represents a lost Converse sale. BB. Zulily 744. Zulily, through the unauthorized use of the Asserted Trademarks, has created a likelihood of confusion among U.S. consumers and likelihood of dilution of the Asserted Trademarks. This unfair competition has caused Converse to lose shoe sales to Zulily and 210 threatens to cause lost sales in the future. In addition, the unauthorized use of the Asserted Trademarks by Zulily is harming or threatening to harm the distinctiveness and selling power of the Asserted Trademarks, thereby diminishing the goodwill associated with the Converse brand. These actual or threatened lost sales, the likelihood of confusion and/or dilution, and the harm to the Converse brand and associated goodwill are causing or threaten to cause substantial injury to Converse's domestic industry. 745. Converse has lost sales and market share to Zulily's Accused Products, and is likely to lose additional sales and market share in the future. Like Converse, Zulily promotes and sells shoes through its online shopping site. See Section IV.BB. Internal Converse market reports, prepared in the ordinary course of business, also describe sales lost by Converse to infringing shoes and other competitive harms. See, e.g., Exhibit 196C. In addition, Converse faces underselling from Zulily's Accused Products. Zulily's Accused Products have sold at significantly lower prices than comparable Converse Shoes, thereby underselling Converse Shoes. See Exhibit 23 ｾ＠ 12, 22, 32, 36. Given the substantial similarity between the Accused Products and Converse Shoes, each sale of Zulily' s Accused Products represents a lost Converse sale. CC. Xinya 746. Xinya, through the unauthorized use of the Converse Midsole Trademark, has created a likelihood of confusion among U.S. consumers and likelihood of dilution of the Converse Midsole Trademark. This unfair competition, including underselling, has caused Converse to lose shoe sales to exported Xinya shoes and threatens to cause lost sales in the future. In addition, the unauthorized use of the Converse Midsole Trademark by Xinya is harming or threatening to harm the distinctiveness and selling power of the Converse Midsole 211 Trademark, thereby diminishing the goodwill associated with the Converse brand. These actual or threatened lost sales, the likelihood of confusion and/or dilution, and the harm to the Converse brand and associated goodwill are causing or threaten to cause substantial injury to Converse's domestic industry. 747. Converse has lost sales and market share to Xinya's Accused Products, and is likely to lose additional sales and market share in the future. On information and belief, Xinya exports the Accused Products to at least FILA, competing with Converse Shoes sold on the Internet and through retail stores. See Section IV.CC, supra. Internal Converse market reports, prepared in the ordinary course of business, also describe sales lost by Converse to infringing shoes and other competitive harms. See, e.g., Exhibit 196C. In addition, Converse faces underselling from Xinya's Accused Products. Xinya's Accused Products have sold at $21.90, underselling comparable Converse Shoes, which ordinarily sell for at least, approximately $50. See Exhibit 23 ｾ＠ 8. Given the substantial similarity between the Accused Products and Converse Shoes, each sale of Accused Products represents a lost Converse sale. DD. Ouhai 748. Ouhai, through the unauthorized use of the Converse Midsole Trademark, has created a likelihood of confusion among U.S. consumers and likelihood of dilution ofthe Converse Midsole Trademark. This unfair competition, including underselling, has caused Converse to lose shoe sales to exported Ouhai shoes and threatens to cause lost sales in the future. In addition, the unauthorized use of the Converse Midsole Trademark by Ouhai is harming or threatening to harm the distinctiveness and selling power of the Converse Midsole Trademark, thereby diminishing the goodwill associated with the Converse brand. These actual or threatened lost sales, the likelihood of confusion and/or dilution, and the harm to the Converse 212 brand and associated goodwill are causing or threaten to cause substantial injury to Converse's domestic industry. 749. Converse has lost sales and market share to exported Ouhai's Accused Products, and is likely to lose additional sales and market share in the future. Ouhai exports the Accused Products to at least Aldo and OPPO, competing with Converse Shoes sold on the Internet and through competing retail stores. See Section IV.DD, supra. Internal Converse market reports, prepared in the ordinary course of business, also describe sales lost by Converse to infringing shoes and other competitive harms. See, e.g., Exhibit 196C. In addition, Converse faces . underselling from Ouhai's Accused Products. Ouhai's Accused Products have sold for $54.98, underselling comparable Converse Shoes. See Exhibit 48 ｾ＠ 2. Ouhai's Accused Products have also sold at $17, underselling comparable Converse Shoes, which ordinarily sell for at least, approximately $55. See Exhibit 23 ｾ＠ 26. Given the substantial similarity between the Accused Products and Converse Shoes, each sale of Accused Products represents a lost Converse sale. EE. Wenzhou 750. Wenzhou, through the unauthorized use of the Converse Midsole Trademark, has created a likelihood of confusion among U.S. consumers and likelihood of dilution of the Converse Midsole Trademark. This unfair competition, including underselling, has caused Converse to lose shoe sales to Wenzhou's Accused Products and threatens to cause lost sales in the future. In addition, the unauthorized use of the Converse Midsole Trademark by Wenzhou is harming or threatening to harm the distinctiveness and selling power ofthe Converse Midsole Trademark, thereby diminishing the goodwill associated with the Converse brand. These actual or threatened lost sales, the likelihood of confusion and/or dilution, and the harm to the Converse 213 brand and associated goodwill are causing or threaten to cause substantial injury to Converse's domestic industry. 751. Converse has lost sales and market share to Wenzhou's Accused Products, and is likely to lose additional sales and market share in the future. Wenzhou exports the Accused Products to at least Ositos, competing with Converse Shoes sold on the Internet and through retail stores. See Section IV.EE, supra. Internal Converse market reports, prepared in the ordinary course of business, also describe sales lost by Converse to infringing shoes and other competitive harms. See, e.g., Exhibit 196C. In addition, Converse faces underselling from Wenzhou's Accused Products. Wenzhou's Accused Products have sold at $20.90, underselling comparable Converse Shoes, which ordinarily sell for at least, approximately $50. See Exhibit 23 ,-r 30. Given the substantial similarity between the Accused Products and Converse Shoes, each sale of Accused Products represents a lost Converse sale. X. RELATED LITIGATION 752. Converse has enforced the Asserted Trademarks against numerous infringers, including in various district courts across the country. Contemporaneously with its filing of the present Complaint, Converse is filing parallel district court actions in the United States District for the Eastern District ofNew York against each ofthe Respondents alleging trademark infringement, false designation of origin, unfair competition, and trademark dilution based on the Asserted Trademarks. 753. On September 9, 2013, Converse filed an action in the United States District Court for the District of Massachusetts against defendant Autonomie Project, Inc., alleging trademark infringement, false designation of origin, unfair competition, trademark dilution, and unfair business practices based on Converse's common law rights in the Asserted Trademarks, as 214 well as U.S. Trademark Registration Nos. 1,588,960; 3,258,103; 4,062,112; and 4,065,482.4 The case was captioned Converse Inc. v. Autonomie Project, Inc., Civil Action No. 1: 13-cv-12220. On January 15, 2014, the Court entered a consent judgment and permanent injunction order against defendant Autonomie Project, Inc. 754. On June 15, 2012, Converse and Nike filed an action in the United States District Court for the Central District of California against defendants Superstar International, Inc.; Jeair Shoes Inc.; King-Air Trading Inc., d/b/a K-Air Shoes; AC Int'l Trading Inc.; Dun Huang International Trading Inc.; Xiao Ming Wu; Sai Lui Jian Qiang Lui; and Yun Mei Yuan alleging, inter alia, trademark infringement, false designation of origin, unfair competition, and trademark dilution based on Converse's common law rights in the Asserted Trademarks, as well as U.S. Trademark Registration Nos. 1,588,960; 3,258,1 03; 4,062, 112; and 4,065,482. The case was captioned Nike, Inc. and Converse Inc. v. Superstar International, Inc. eta!., Civil Action No. 2: 12-cv-5240. The Court entered (1) a consent judgment and permanent injunction order against defendants Superstar International, Inc., AC Int'l Trading Inc., and Sai Liu on May 15, 2013, and (2) a consent judgment and permanent injunction order against defendants Dun Huang International Trading Inc., King-Air Trading Inc., Jian Qiang Liu, and Xiao Ming Wu on May 17,2013. 755. On February 6, 2012, Converse and Nike filed an action in the United States District Court for the District ofNevada against defendant QiLoo International Limited alleging, inter alia, trademark infringement, false designation of origin, unfair competition, and trademark dilution based on, inter alia, Converse's common law rights in the Asserted Trademarks, as well 4 Converse's U.S. Trademark Registration No. 4,398,753 relating to the Converse Midsole Trademark issued after Converse instituted the related litigations set forth in the following paragraphs of Section X. 215 as U.S. Trademark Registration Nos. 1,588,960; 3,258,103; 4,062,112; and 4,065,482. The case was captioned Nike, Inc. and Converse Inc. v. QiLoo International Limited, Civil Action No. 2:12-cv-00191. On November 1, 2012, the Court entered a fmal default judgment and a permanent injunction order against defendant QiLoo International Limited. 756. On February 3, 2012, Converse filed an action in the United States District Court for the Southern District ofNew York against defendant ModCloth, Inc. alleging trademark infringement, false designation of origin, unfair competition, and trademark dilution based on, inter alia, Converse's common law rights in the Asserted Trademarks, as well as U.S. Trademark Registration Nos. 1,588,960; 3,258,103; 4,062,112; and 4,065,482. The case was captioned Converse Inc. v. ModCloth, Inc., Civil Action No. 1:12-cv-00891. On May 1, 2012, the Court approved a stipulation of voluntary dismissal of the action as a result of an agreed-upon settlement. 757. The Asserted Trademarks have not been the subject of any other court or agency litigation. XI. GENERAL EXCLUSION ORDER 758. Should the Commission fmd a violation of Section 337, a general exclusion order ("GEO") directed to certain footwear products that violate Converse's rights in one or more of the Asserted Trademarks is necessary and appropriate to prevent circumvention of a limited exclusion order directed to Respondents and/or to remedy a pattern of violation of Section 337. 19 U.S.C. § 1337(d)(2). As described in more detail below, the facts in this case, as alleged in this Complaint and likely to be revealed through discovery, demonstrate a high demand for knockoff footwear products in the United States and a large and established distribution system, interchangeability of foreign manufacturers ofknockofffootwear products, large foreign 216 capacity to produce knockoff footwear products with ease and at low cost, and a propensity and ability of foreign suppliers of knockoff footwear products to change company names and corporate forms in attempt to evade enforcement efforts. 759. First, there exists high demand, and a well-established and extensive distribution system, for knockoff footwear products in the United States. That distribution system, as discussed in Section II.A.l.b above, includes department stores, specialty stores, and an extensive Internet-based sales and distribution network. See Sections IV.CC--EE, supra. One indicator of the high demand for knockoff footwear products is the large number of Respondents selling and promoting Accused Products. See Section IV, supra. Indeed, unauthorized use of the Asserted Trademarks continues to grow, notwithstanding Converse's longstanding, ongoing, and substantial efforts to police its rights over the years. Approximately two months ago, at the WSA trade show held in Las Vegas on August 18-20, 2014, Converse identified more than 20 companies promoting and selling knockoff footwear products. These violations were discovered at a section ofthe show billed as "the most comprehensive fashion sourcing event in the world." All of the knockoff footwear products purported to be manufactured outside the United States, mostly from China. Exhibitors at the show were present in Las Vegas for only a few days, during which, on information and belief, they took orders for container loads full of shoes that infringe and dilute the Asserted Trademarks, many of which will be bound for the United States. Figure 51 below shows representative images of shoes being promoted at different exhibitors' booths throughout the show. 217 FIGURE 51: Representative Images of Knockoff Footwear Products Displayed at the August 2014 WSA Show 760. Second, manufacturers are largely interchangeable. In the last three years alone, Converse, with the assistance of local authorities, has conducted over 200 raids on foreign footwear production facilities, resulting in the seizure of millions of pairs of counterfeit footwear products and materials for making counterfeit footwear products. See Section III.B, supra. In particular, Converse seized almost 60,000 pairs of counterfeit footwear products worldwide in 2009, increasing to over 670,000 pairs of counterfeit footwear products worldwide in 20 I 0. That number more than doubled in fiscal year 2011 , and from fiscal years 2012 to 2014, Converse seized more than 2 million pairs of counterfeit footwear products worldwide. The sheer number 218 of seizures, obtained from many different manufacturers, attests to the interchangeability and ubiquity of foreign production facilities able and motivated to manufacture counterfeit and/or knockoff footwear products. Indeed, on information and belief, factories previously raided by Converse are also suppliers to several Respondents. See Sections IV.CC-EE, supra. 761. Third, foreign manufacturers can easily and inexpensively retool foreign factories to manufacture knockoff footwear products for sale and importation into the United States. The basic manufacturing requirements are footwear molds and an autoclave oven that can produce vulcanized rubber shoes. In the course of foreign factory raids, Converse has seized numerous outsole molds used to manufacture counterfeit footwear products. On information and belief, the equipment needed to produce counterfeit or knockoff footwear products, using such molds, can be retooled at very low cost. The ability of, and interest among, foreign manufacturers to retool factories to make counterfeit or knockoff footwear products is shown by the large number of seizures by Converse in recent years in Asia. Additionally, imports of Asian-produced footwear products into the United States in 2013 totaled over $21 billion, indicative of the large foreign capacity to supply footwear products to the U.S. market. See Exhibit 220. 762. Finally, it is difficult to determine the source of imported knockoff footwear products. Many foreign manufacturers ofknockofffootwear products do business under multiple names and through different subsidiaries, import knockoff footwear products into the United States through many different importers, and have shown the ability to quickly change the manufacturer's name and corporate form. In addition, many trading companies offer knockoff and counterfeit footwear products for sale and importation into the United States on the Internet - advertising large production volumes and short turnaround times, under a week in some cases, and offering to sell and ship footwear products to retailers, distributors, and 219 consumers in the United States. See, e.g. Exhibit 221; Exhibit 222. Some trading companies will even offer to sell counterfeit Converse shoe boxes for packaging. See, e.g., Exhibit 223. An increasing number oftrading companies are selling counterfeit and knockoff Converse shoes on social media sites such as Instagram and Twitter, and on discount online market places such as The Discount Dame. See Exhibit 224. Very few, if any, ofthese trading companies identify the ultimate manufacturer ofknockofffootwear products. In addition, some Chinese suppliers of knockoff footwear products seek to avoid detection by segmenting the manufacturing process. For example, one factory, owned and operated by one company, may stitch the upper portions of the shoe, while another factory, owned and operated by a second company, may manufacture the outsoles, and a third company may assemble the final shoe. 763. The imposition of a GEO is therefore necessary both to remedy the injury Converse is currently experiencing and to protect Converse from the threat of substantial injury from unfairly traded imports of knockoff footwear products. XII. REQUEST FOR RELIEF WHEREFORE, Complainant Converse respectfully requests that the United States International Trade Commission: A. Institute an immediate investigation pursuant to Section 337(b)(1) ofthe Tariff Act of 1930, as amended, 19 U.S.C. §1337, into the violation by Respondents of Section 337 arising from the importation into the United States, and/or sale for importation, and/or sale within the United States after importation, of Respondents' footwear products that infringe or dilute one or more of the Asserted Trademarks; B. Schedule and conduct a hearing pursuant to Section 337(c) for purposes of receiving evidence and hearing argument concerning whether there has been a violation of 220 Section 337, and, following the hearing, to determine that there has been a violation of Section 337; C. Issue a general exclusion order forbidding entry into the United States of footwear products that violate Converse's rights in one or more of the Asserted Trademarks and colorable imitations thereof; Alternatively, issue a limited exclusion order forbidding entry into the United States of footwear products imported, sold for importation, or sold after importation by Respondents that violate Converse's rights in one or more of the Asserted Trademarks and colorable imitations thereof; D. Issue a permanent cease and desist order, pursuant to Section 337(f), directing Respondents to cease and desist from the importation, marketing, advertising, demonstrating, warehousing of inventory for distribution, sale, and use in the United States of imported footwear articles that violate Converse's rights in one or more ofthe Asserted Trademarks and colorable imitations thereof; and E. Grant all such other and further relief as it deems appropriate under the law, based upon the facts complained of herein and as determined by the investigation. XIII. GLOSSARY OF TERMS • Anatomy of a Shoe: o Upper: The material (often canvas or leather) that more or less surrounds the top of a foot. o Midsole: The portion of a shoe between the upper and the outsole that often provides cushioning and/or support structure to the shoe. o Outsole: The tread or bottom of a shoe ordinarily in contact with the ground. • Asserted Trademarks: Refers collectively to Converse's common law and federally registered trademark rights in the Converse Midsole Trademark (midsole design) and in the Converse Outsole Trademark (outsole design). 221 • Converse Midsole Trademark: The midsole design made up of a toe bumper and a toe cap, plus either an upper stripe and/or a lower stripe that have commonly been used by Converse since 1932 in connection with "All Star" shoes, among other Converse products. In addition to strong rights obtained through long term and consistent use, known as common law trademark rights, the Converse Midsole Trademark is covered by U.S. Trademark Registration No. 4,398,753. • Converse Outsole Trademark: The outsole design made up of diamond shapes and lines that have commonly been used by Converse since 1917 in connection with "All Star" shoes, among other Converse products. The Converse Outsole Trademark Ｌﾷ＼ＮＺＺＺｾﾷﾷﾷﾷﾷﾷﾷﾷﾷﾷ＠ is covered ｾｾ＠ by U.S. Trademark Registration Nos. 1,588,960 and (( .... ＺＺＺＺﾷﾷﾷｾ＠ ...... ｾＺＺＺﾷﾷﾷﾷﾷﾷＭ 3,258,1 03. Both of these registrations are incontestable, meaning they provide conclusive evidence of Converse's ownership and exclusive right to use the Converse Outsole Trademark. • Counterfeit: An unauthorized product that copies the Converse Midsole and Outsole Trademarks, along with Converse word marks and/or logos as they would ordinarily appear on genuine Converse shoes. In other words, a direct copy of a genuine Converse shoe. • Knockoff: An unauthorized product bearing close simulations of the Converse Midsole and/or Outsole Trademarks but- unlike counterfeits -lacking other trademarks ordinarily found on genuine Converse shoes. These products sometimes include words or logos that look similar to, but not identical to, Converse trademarks. • Midsole of a Shoe: See, "Anatomy of a Shoe." • Outsole of a Shoe: See, "Anatomy of a Shoe." • United States Trademark Registration No. 1,588,960 or the "'960 Registration": A three dimensional sole of shoe design trademark duly registered by the United States Patent and Trademark Office to Converse on March 27, 1990, in connection with athletic footwear in International Class 25, now incontestable. 222 • United States Trademark Registration No. 3,258,103 or the "'103 Registration": A three dimensional tread design trademark duly registered by the United States Patent and Trademark Office to Converse on July 3, 2007, in connection with footwear in International Class 25, now incontestable. • United States Trademark Registration No. 4,398, 753 or the '"753 Registration": The design of the two stripes on the midsole ofthe shoe, the design of the toe cap, the design ofthe multi-layered toe bumper featuring diamonds and line patterns, and the relative position of these elements to each other, trademark duly registered by the United States Patent and Trademark Office to Converse on September 10, 2013, in connection with footwear i International Class 25. • Upper of a Shoe: Dated: October 14, 2014 V. Ja es Adduc· II Dea a Tanner kun Jon than J. Engler Thomas R. Burns, Jr. AshaAllam Evan H. Langdon Lauren E. Peterson ADDUCI, MASTRIANI & SCHAUMBERG, LLP 1133 Connecticut Avenue, N.W., 12th Floor Washington, DC 20036 Telephone: (202) 467-6300 Facsimile: (202) 466-2006 Christopher J. Renk Erik S. Maurer Michael J. Harris Katherine Laatsch Fink Audra C. Eidem Heinze Aaron P. Bowling BANNER & WITCOFF, LTD. Ten South Wacker Drive, Suite 3000 Chicago, IL 60606 Telephone: (312) 463-5000 Facsimile: (312) 463-5001 223 VERIFICATION OF COMPLAINT I, James A. Calhoun, declare, in accordance with 19 C.P.R. §§ 210.4 and 210.12(a), under penalty of pe1jury, that the following statements are uue: 1. I am cunently the President and CEO for Complainant Converse Inc. ("Converse") and am duly authorized to sign this Complaint on behalf of Converse; 2. I have read the foregoing Complaint and am aware of its contents; 3. To the best of my knowledge, information, and belief, formed after an inquiry reasonable under the circumstances, the allegations and other factual contentions of the Complaint have evidentiary support or, where indicated, are likely to have evidentiary support after a reasonable opportunity for fmther investigation or discovery; 4. To the best of my knowledge, information and belief, formed after an inquiry reasonable under the circumstances, the claims, defenses, and other legal contentions of the forgoing Complaint are warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law or the establishment of new law; and 5. To the best of my knowledge, information and belief, formed after an inquiry reasonable under the circumstances, the foregoing Complaint is not being filed for an improper purpose, such as to harass or to cause unnecessary delay or needless increase in the cost of the litigation or any related proceeding. Executed Ji_ October, 201 . Converse Inc. EXHIBIT 3 Case: 16-2497 Document: 1-2 Page: 1 Filed: 08/16/2016 No. 2016-_____ UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT CONVERSE INC. Appellant, v. UNITED STATES INTERNATIONAL TRADE COMMISSION, Appellee. Appeal from the United States International Trade Commission, Investigation No. 337-TA-936 PETITION FOR REVIEW Case: 16-2497 Document: 1-2 Page: 2 Filed: 08/16/2016 PETITION FOR REVIEW Pursuant to Federal Rule of Appellate Procedure 15(a), Federal Circuit Rule 15(a), and 19 U.S.C. § 1337(c), Converse Inc. (“Converse”) hereby petitions and appeals the Court for review of the final determination of the United States International Trade Commission (“Commission”), as provided in the following orders: (1) the “Notice of a Commission Decision to Affirm-in-Part, Reverse-in- Part, and Vacate Certain Portions of a Final Initial Determination Finding a Violation of Section 337; Issuance of General Exclusion Order; Termination of the Investigation,” dated June 23, 2016; (2) the “Commission Opinion,” dated June 23, 2016; and (3) the “Initial Determination on Violation of Section 337 and Recommended Determination on Remedy and Bond,” dated November 17, 2015. Appellants also seek review of all adverse judgments, decrees, decisions, rulings, findings, instructions, and opinions rendered by the Commission and fairly merged into the final orders in this proceeding. The case was styled before the Commission as Certain Footwear Products, Inv. No. 337-TA-936. The Commission issued its Determination on June 23, 2016. This petition is filed within the 60-day period allowed by 19 U.S.C. 1337(c). Converse has submitted payment of the $500 filing fee in connection with the filing of the petition. Undersigned counsel represent Converse in this proceeding. Case: 16-2497 Document: 1-2 Page: 3 Filed: 08/16/2016 Dated: August 15, 2016 Respectfully submitted, By: /s/ Christopher J. Renk Christopher J. Renk Erik S. Maurer Michael J. Harris Audra C. Eidem Heinze Aaron P. Bowling Banner & Witcoff, Ltd. Ten South Wacker Drive, Suite 3000 Chicago, IL 60606 Telephone: (312) 463-5000 Facsimile: (312) 463-5001 Dale Cendali, P.C. Kirkland & Ellis LLP 601 Lexington Avenue New York, NY Telephone: (212) 446-4800 Facsimile: (212) 446-4900 John C. O’Quinn Kirkland & Ellis LLP 655 Fifteenth Street, N.W. Washington, D.C. 20005 Telephone: (202) 879-5000 Facsimile: (202) 879-5200 Attorneys for Appellant Converse Inc. Case: 16-2497 Document: 1-2 Page: 4 Filed: 08/16/2016 CERTIFICATE OF SERVICE I, Aaron P. Bowling, hereby certify that on August 15, 2016, I served the foregoing PETITION FOR REVIEW on Appellee United States International Trade Commission via U.S. Mail, as follows: The Honorable Lisa R. Barton, Secretary U.S. International Trade Commission 500 E Street, S.W., Room 112 Washington, D.C. 20436 I further certify that on August 15, 2016, I served the foregoing PETITION FOR REVIEW on the following parties to the agency proceedings via U.S. Mail and electronic mail, as follows: Counsel for Skechers U.S.A., Inc.: Counsel for Wal-Mart Stores, Inc.: Barbara A. Murphy Mareesa A. Frederick, Esq. Foster, Murphy, Altman & Nickel, PC Finnegan, Henderson, Farabow, Garret 1899 L Street, NW, Suite 1150 & Dunner LLP Washington, DC 20036 901 New York Avenue, NW [email protected] Washington, DC 20001 [email protected] Morgan Chu, Esq. Irell & Manella LLP Laura L. Chapman, Esq. 1800 Avenue of the Stars, Suite 900 Sheppard, Mullin, Richter & Hampton Los Angeles, CA 90067-4276 LLP [email protected] Four Embarcadero Center, 17th Floor San Francisco, CA 94111 Jeffrey A. Barker, Esq. LegalTM-Walmart- O’Melveny & Meyers LLP [email protected] 1999 Avenue of the Stars Los Angeles, CA 90067-6035 Counsel for Highline United LLC: Michael S. O’Rourke, Esq. Gerard P. Norton, Esq. Sandler, Travis & Rosenberg, P.A. Fox Rothschild LLP 551 5th Avenue, Suite 1100 Princeton Pike Corporate Center New York, NY 10176 997 Lennox Drive, Building 3 [email protected] Lawrenceville, NJ 08648-2311 [email protected] Case: 16-2497 Document: 1-2 Page: 5 Filed: 08/16/2016 Counsel for New Balance Athletic Counsel for Office of Unfair Import Shoe, Inc.: Investigations: Thomas S. Fusco, Esq. Sarah J. Sladic, Esq. Fish & Richardson P.C. Office of Unfair Import Investigations 1425 K Street, NW, 11th Floor U.S. International Trade Commission Washington, DC 20005 500 E Street, S.W. [email protected] Washington, DC 20436 [email protected] /s/ Aaron P. Bowling Aaron P. Bowling Case: 16-2497 Document: 1-2 Page: 6 Filed: 08/16/2016 No. 2016-_____ UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT CONVERSE INC. Appellant, v. UNITED STATES INTERNATIONAL TRADE COMMISSION, Appellee. Appeal from the United States International Trade Commission, Investigation No. 337-TA-936 LIST OF ATTACHMENTS TO PETITION FOR REVIEW Attachment Description Notice of a Commission Decision to Affirm-in-Part, Reverse-in-Part, and Vacate Certain Portions of a Final Initial Determination Finding 1 a Violation of Section 337; Issuance of General Exclusion Order; Termination of the Investigation (June 23, 2016) Commission Opinion of the U. S. International Trade Commission 2 (June 23, 2016) (Public Version) Initial Determination on Violation of Section 337 and Recommended 3 Determination on Remedy and Bond (November 17, 2015) (Public Version) EXHIBIT 4 Case: 16-2497 Document: 33 Page: 1 Filed: 09/20/2016 NOTE: This order is nonprecedential. United States Court of Appeals for the Federal Circuit ______ CONVERSE, INC., Appellant v. INTERNATIONAL TRADE COMMISSION, Appellee SKECHERS U.S.A., INC., WAL-MART STORES, INC., NEW BALANCE ATHLETICS, INC., fka New Bal- ance Athletic Shoe, Inc., HU LIQUIDATION, LLC, fka Highline United LLC, Intervenors ______ 2016-2497 ______ Appeal from the United States International Trade Commission in Investigation No. 337-TA-936. ______ ON MOTION ______O R D E R Upon consideration of HU Liquidation, LLC’s unop- posed motion to intervene in this appeal, Case: 16-2497 Document: 33 Page: 2 Filed: 09/20/2016 2 CONVERSE, INC. v. ITC IT IS ORDERED THAT: The motion is granted. The revised official caption is reflected in this order. FOR THE COURT /s/ Peter R. Marksteiner Peter R. Marksteiner Clerk of Court s25