New Balance Athletic Shoe, Inc. v. Converse Inc.

Filing 31

Judge Nathaniel M. Gorton: ORDER entered. MEMORANDUM AND ORDER granting 18 Cross MOTION to Stay (Defendant Converse Inc.s Cross-Motion for Stay and Response in Opposition to the Motion for Expedited Proceedings and Trial) filed by Co nverse Inc., denying 9 MOTION to Expedite filed by New Balance Athletic Shoe, Inc. "For the foregoing reasons, 1) plaintiff's motion to expedite (Docket No. 9) is DENIED; 2) defendant's motion to stay (Docket No. 18) is ALLOWED. The stay shall remain in effect pending resolution of the ITC action, Inv. No. 337-TA-936; and 3) the parties shall file joint status reports on or before August 31, 2015, and at six-month intervals thereafter. So ordered."(Patch, Christine)

United States District Court
District of Massachusetts
)
NEW BALANCE ATHLETIC SHOE, INC., )
)
Plaintiff,
)
)
v.
)
)
CONVERSE, INC.,
)
)
Defendant.
)
)

Civil Action No.
14-14715-NMG

MEMORANDUM & ORDER
GORTON, J.
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.
I.

Background
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.
-1-

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 validity and
enforceability of the Converse Midsole Trademark, is scheduled
for trial in August, 2015.
In January, 2015, New Balance moved to intervene in the ITC
action.

That motion was allowed shortly thereafter.

-2-

C.

Procedural history

In December, 2014, plaintiff filed a complaint in this
action seeking 1) a declaratory judgment of non-infringement of
the Converse Midsole Trademark and 2) a cancellation of that
mark.

In January, 2015, plaintiff filed a motion requesting

that this Court expedite pretrial proceedings and schedule trial
for July, 2015.

Defendant responded with a cross motion to stay

the case.
II.

Plaintiff’s motion to expedite and defendant’s cross motion
to stay
A.

Legal standard

Every court is vested with the power
to control the disposition of the causes on its docket
with economy of time and effort for itself, for
counsel, and for litigants.
Landis v. N. Am. Co., 299 U.S. 248, 254-55 (1936).

This Court

may therefore expedite or stay proceedings in its discretion
through “the exercise of judgment, which must weigh competing
interests and maintain an even balance.” Id.
B.

Application

New Balance contends that justice requires the Court to
provide an expedited pretrial and trial schedule.

It seeks a

trial here before August, 2015 when trial in the ITC action is
scheduled.

-3-

As an initial matter, plaintiff’s argument that it cannot
properly assert its rights to the PF Flyers brand in the ITC
action as a non-party is now moot because New Balance has since
successfully intervened in that case and will therefore be heard
as a full participant.
Notwithstanding its successful intervention in the ITC
action, New Balance seeks to expedite the case before this
Court.

It argues that this Court is a more effective forum in

which to adjudicate its trademark invalidity and noninfringement contentions because, unlike the ITC, 1) this Court
is empowered to cancel the Converse Midsole Trademark, 2)
plaintiff can be afforded a jury trial and 3) the rules of
evidence are more rigorous.
The Court does not, however, perceive these differences to
prejudice the plaintiff unfairly.

Although remedies such as

money damages and cancellation of trademarks are unavailable at
the ITC, the underlying facts and key legal issues of trademark
infringement and validity can and will be decided in the pending
ITC action.

New Balance can adjudicate the validity of

defendant’s mark there and, if it prevails, move in this Court
to cancel the registration.
Plaintiff has also failed to explain how the absence of a
jury trial or the more relaxed hearsay rules in the ITC will
adversely affect its ability to defend the PF Flyers brand.
-4-

In

any event, the evidentiary burden of proving invalidity of the
Converse Midsole Trademark remains on New Balance regardless of
the forum.

Plaintiff’s purported need for urgency is belied by

the fact that nearly two years has elapsed since Converse filed
its trademark application.

New Balance, in the meantime, has

not challenged its validity.

It did not submit an opposition to

the registration of the Converse Midsole Trademark when it was
first published for opposition in January, 2013, nor did it
initiate a proceeding before the Trademark Trial and Appeal
Board to cancel the mark after the registration was granted in
September, 2013.

As this Court has noted, “[w]ithout a risk of

irreparable harm, expedited discovery is unwarranted.” Momenta
Pharm., Inc. v. Teva Pharm. Indus. Ltd., 765 F. Supp. 2d 87, 89
(D. Mass. 2011).
In addition to opposing plaintiff’s motion, defendant has
moved to stay the case pending a final decision in the ITC
action.

It contends that a stay is warranted because 1) it

would conserve party and judicial resources by allowing the ITC
investigation to narrow the issues before this case proceeds and
2) it would avoid potentially inconsistent judgments.

The Court

agrees.
Plaintiff has not demonstrated adequate cause for the Court
to foreshorten its standard scheduling protocol or to engage in
a headlong race with the ITC to address the same issues of
-5-

trademark infringement and validity.

The Court acknowledges

that plaintiff is entitled to deference in its choice of forum
because it filed the instant declaratory judgment action before
it intervened in the ITC investigation.

Such deference does

not, however, outweigh other factors that clearly favor a stay
of this action.
Accordingly, in the interests of fairness and judicial
economy, the Court will decline to expedite the trial in this
case.

It will, instead, allow a stay on these proceedings

pending resolution of the related, earlier-filed action in the
ITC in which substantially the same issues are to be
adjudicated.

It will also require the filing of semi-annual,

joint status reports.

-6-

ORDER
For the foregoing reasons,
1)

plaintiff’s motion to expedite (Docket No. 9) is
DENIED;

2)

defendant’s motion to stay (Docket No. 18) is ALLOWED.
The stay shall remain in effect pending resolution of
the ITC action, Inv. No. 337-TA-936; and

3)

the parties shall file joint status reports on or
before August 31, 2015, and at six-month intervals
thereafter.

So ordered.
/s/ Nathaniel M. Gorton
Nathaniel M. Gorton
United States District Judge
Dated February 18, 2015

-7-