United States District Court, D. Massachusetts
For New Balance Athletic Shoe, Inc., Plaintiff: Elizabeth E. Brenckman, LEAD ATTORNEY, PRO HAC VICE, Fish & Richardson P.C., New York, NY; Mark S. Puzella, LEAD ATTORNEY, Richard D. Hosp, Fish & Richardson P.C., Boston, MA; Sheryl Koval Garko, Fish & Richardson, P.C. (Bos), Boston, MA.
For Converse Inc., Defendant, Counter Claimant, Counter Defendant: Andrea Jeffries, LEAD ATTORNEY, PRO HAC VICE, Wilmer Cutler Pickering Hale and Door LLP, Los Angeles, CA; Christopher J. Renk, Michael J. Harris, LEAD ATTORNEYS, PRO HAC VICE, Banner & Witcoff, Ltd., Chicago, IL; Erik S. Maurer, LEAD ATTORNEY, PRO HAC VICE, Banner & Witcoff, Chicago, IL; Mark G. Matuschak, LEAD ATTORNEY, Wilmer Hale LLP, Boston, MA; Martin E. Gilmore, LEAD ATTORNEY, PRO HAC VICE, Wilmer Cutler Pickering Hale and Dorr LLP, New York, NY; Allison Trzop, Wilmer Cutler Pickering Hale and Dorr LLP (Bos), Boston, MA; Vinita Ferrera, Wilmer Hale LLP, Boston, MA.
MEMORANDUM & ORDER
Nathaniel M. Gorton, United States District Judge.
This case arises from a trademark infringement dispute between plaintiff New Balance Athletic Shoe, Inc. (" New Balance" ) and defendant Converse, Inc. (" Converse" ).
Pending before the Court are plaintiff's motion to expedite proceedings and defendant's cross motion to stay. For the reasons that follow, plaintiff's motion will be denied and defendant's motion will be allowed.
A. The products at issue
In 2001, New Balance acquired the athletic footwear brand PF Flyers. Those shoes are comprised of a canvas upper, toe bumper, toe cap and striped midsole. Defendant Converse sells the Chuck Taylor All Star athletic footwear brand that shares some common design elements with PF Flyers. Both brands have been available in the United States for more than half a century.
In September, 2013, Converse was issued a trademark with U.S. Registration No. 4,398,753 (" the Converse Midsole Trademark" ), which
consists of the design of the two stripes on the midsole of the shoe, the design of the toe cap, the design of the multi-layered toe bumper featuring diamonds and line patterns, and the relative position of these elements to each other.
The Converse Midsole Trademark covers the design that defendant uses in connection with its Chuck Taylor All Star shoes.
B. Ongoing action in the United States International Trade Commission (" ITC" )
Converse filed a complaint with the ITC in October, 2014 seeking a general exclusion order against numerous alleged infringers of its Chuck Taylor All Star brand footwear (" the ITC action" ). New Balance is not one of the named respondents, although it contends that the language of the proposed general exclusion order is broad enough to apply to PF Flyers as well. The ITC action, which will adjudicate the ...