The Fifth Circuit Court of Appeals panel agreed unanimously to reinstate a trademark infringement and trademark dilution lawsuit filed by Alpha Kappa Alpha and Delta Sigma Theta Sororities and Alpha Phi Alpha, Kappa Alpha Psi, Omega Psi Phi, and Phi Beta Sigma Fraternities.
The original case arose out of a complaint filed in 2003, in the U.S. District Court for the Northern District of Texas, Dallas Division, on behalf of six predominantly African-American fraternities and sororities against Converse, alleging federal and state claims of trademark and trade dress infringement, as well as unfair competition. The sororities and fraternities own a series of trademarks and trade dress, some of which contain the founding year(s), colors and identification of the plaintiffs.
According to the complaint, Converse produced and marketed a line of athletic shoes called the GREEKPAK Weapon basketball shoe that features a two-color combination associated with one of the organizations and a small embroidered date near the heal of the shoe that corresponds to the founding year of that same organization. The district court granted Converse's motion to dismiss on January 12, 2005.
However, in an opinion just written by the Chief and Presiding Justice of Fifth Circuit Court of Appeals, the Court, citing to the “detailed description of the claimed marks or dress in the plaintiff's complaint,” ruled that “the district court's conclusion is difficult to square with the excerpts from the complaint.”
The high court ruled that the case should not have been dismissed and ordered that it be sent back to the District Court. Converse was also ordered to pay the court costs and filing fees for losing the appeal.
Delta Sigma Theta National President, Dr. Louise Rice, who has followed the lengthy appeal, said of the opinion, “This is a significant victory. Since our founding in 1913, our trademarks have always been recognized and have never been under attack in such a manner. This will send a message to Converse and everyone else that we are committed to undertaking whatever effort is necessary to ensure that our marks are not infringed or diluted.”
John S. Kendall, co-counsel for the organizations added, “We applaud our clients for continuing this fight and having confidence in our opinion that this case would be reinstated.”
After hearing from members across the country, many of the groups were considering calling for a world-wide economic boycott of Converse and its parent company, Nike, over what the groups perceived as an attack on the marks of these African-American organizations. Pittman and Kendall added, “If Converse wants to spend another two years fighting this, we are prepared to go full steam ahead. On the other hand, if it is prepared to admit its wrongs and avoid the calls for a boycott, our clients are open to discussing other ways of protecting their rights.”
The six plaintiffs are a part of the National Pan-Hellenic Council (NPHC), which is comprised of nine (9) International Greek letter Sororities and Fraternities
