NPHC Sues Converse
 

FOR IMMEDIATE RELEASE

African-American Sororities and Fraternities File Trademark
Infringement Suit Against Converse Suit alleges that Converse
gained at the expense of African-American groups and consumers

Dallas, TX - December 17, 2003 - The Council of Presidents
announced today that they have sued sports apparel company
Converse, Inc. for trademark infringement and deceptive trade
practices.

"We were concerned that Converse, using unfair competition and
infringing upon our groups' intellectual property, had deliberately
and callously decided to target the members of our organizations
for sales of its shoes without obtaining any sort of permission
from our groups," said Helen Owens, Chair of the Council of
Presidents and national president of Sigma Gamma Rho Sorority, Inc.

The lawsuit, which has been filed in the United District Court for
the Northern District of Texas, Dallas Division, maintains that
Converse has been manufacturing, marketing, and selling athletic
footwear, called the GreekPak, to members and supporters of African-
American fraternities and sororities and that this conduct
constitutes trademark and trade dress infringement, as well as
unfair competition and deceptive trade practices.
As indicated
by Harry Johnson, national president of Alpha Phi Alpha Fraternity,
Inc., "the Converse shoes we're looking at contain the identical
founding year and organizational colors as our respective
organizations and was an obvious attempt by Converse to capitalize
on the goodwill our groups have worked so hard to develop. This was
no coincidence."

The lawsuit charges that Converse has enriched itself at the
expense of the African-American fraternities and sororities and the
unsuspecting consumers who believe that Converse has permission
from and endorsement by these African-American groups to sell these
shoes. The lawsuit seeks damages for past acts of infringement,
punitive damages, and requests that Converse be enjoined from
continuing to sell these products without permission. Converse was
purchased by Nike in September 2003.

"This lawsuit will send the message to large and small companies
that our organizations will aggressively protect our rights and
will not tolerate anyone infringing upon these rights without us
taking action. If any person or organization wants the right to
market our intellectual property, they must come to us to discuss a
license or endorsement agreement. If they don't, they may find
themselves in court, said George Grace, national president of Omega
Psi Phi Fraternity, Inc. To be fair, competition has to be based on
a level playing field - companies must compete on the basis of
originality and according to the laws of this country. All we ask
is that Converse play by these rules and stop infringing our
rights."

The Council of Presidents is comprised of the heads of the nine
predominately African-American fraternities and sororities, which
includes Alpha Phi Alpha Fraternity, Inc., Alpha Kappa Alpha
Sorority, Inc., Kappa Alpha Psi Fraternity, Inc., Omega Psi Phi
Fraternity, Inc., Delta Sigma Theta Sorority, Inc., Phi Beta Sigma
Fraternity, Inc., Zeta Phi Beta Sorority, Inc., Sigma Gamma Rho
Sorority, Inc., and Iota Phi Theta Fraternity Inc. The Council of
Presidents represents the interests of the hundreds of thousands of
its members, who are in fields such as medicine, law, professional
sports, bipartisan elective offices, accounting, engineering,
aviation, finance and banking, print and broadcast media,
entertainment, sales, law enforcement, firefighting,
communications, teaching, telecommunications, data processing, human
resources, social work, etc.

The Council of Presidents collaborates on matters upon which the
National Pan Hellenic Council organizations share a common
interest. The nine NPHC member organizations each have hundreds of
chapters on college campuses and alumni chapters in cities across
the world and are actively involved in programs that enrich the
educational and economic lives of African-Americans.

-Intellectual property litigation attorneys Aubrey "Nick" Pittman
of Dallas, Texas (214-459-3454) and John S. Kendall of Chicago,
Illinois
(312-857-1997) represent the fraternities and sororities in the
lawsuit.

Contact:
Helen J. Owens, Chair
Council of Presidents
8800 South Stony Island Avenue
Chicago, IL 60617
773-873-9000 >>

A waste of time
 

I doubt if you can claim ownership of a color.

I doubt if you can claim ownership of a date or year.

Re: A waste of time
 

Actually 1906 and 06 are trademark properties of Alpha Phi Alpha Fraternity Incorporated.

Re: Re: A waste of time
 

How come you trademark something like year? Does it mean NOBODY else than the org allowed to use the number "1906"? That's absurd!
So technically, if my great-grandma was born in the year of our LORD 1906, the org. would sue her because she used the trademarked number?!? :rolleyes:

Re: Re: Re: A waste of time
 

Hey All I am telling you is what is. The 1906 is TM by ownership of Alpha Phi Alpha Fraternity Incorporated. Any paraphanalia holding that in Black and Gold is trademarked to the Fraternity. See http://www.alphaphialpha.net under vendors and look up vendor contracts. All I can say is General Presidents of Alpha took time to protect a lot of items. Also anyone can use 1906 but they cannot use it as a sell item. ie anyone can sing happy birthday but the song is trademarked and if you sell something on it it must be approved by the owner of the trademark.

I have not had the time to read through the entire original post, but this is to support Sphinxpoet's argument.

If it were JUST 1906 or 06...then maybe I'd buy it [that a trademark lawsuit would not hold up]...

...or MAYBE if it was just black and gold then I would buy it...

but 1906 AND Black & Gold...that's a pretty obvious trademark...especially within the community that they were catering.

You can sell a shirt that says "1892" (or whatever the year is) and you can sell a shirt that says "AF"..but if your shirt says "AF 1892" then obviously you're going to be getting a letter, hand delivered to you by some lawyers.

basically

Converse should've just asked; I'm sure a sweet deal could be worked out where a percentage of the proceeds would be donated to a particular charity

EXACTLY!!

I can think of a great future monument that they're working on in Washington D.C. that could have used that money!

Good luck to the NPHC on this! Hopefully this lawsuit can prevent this from happening to other organizations!

I don't know what the shoes look like, so I'm flying somewhat blind here, but here's my thoughts.

I don't believe "1906" and "06" standing alone can be trademarked. However, I did do a search on the USPTO website and Alpha Phi Alpha does have 1906 trademarked in conjunction with their name, as well as their coat of arms. Plenty of other fraternities and sororities (mine included) do the same--that's perfectly legal.

If Converse is making shoes using 1906 AND Alpha Phi Alpha, and/or in the fraternity colors, there could be a trademark or trade dress issue there. The courts will use several different factors to decide if there was a violation or not, which I won't get into here.

Long story short, Converse should probably have asked first.

Situations like this are why I try my hardest to purchase items from licensed vendors. That way I know Alpha Gam is being reiumbursed; I don't want random people making money off my sorority affiliation without my sorority getting something in return. I know that sometimes that's easier said than done, though.

Too bad we're both 1899.

Was Converse started in 1906?

It looks as though Converse was founded in 1908 as per their website
"Established by Marquis M. Converse in 1908, Converse is an American athletic shoe brand with nearly a century of authentic sports history and footwear innovation under its laces."

taken from http://converse.com/zabout.asp

You guys, the NPHC isn't stupid. If it was just that Converse was started in 1906 and happened to use black and gold to market a shoe, I doubt they would care (not to mention the fact that it sounds like Converse used ALL the organizations' colors and founding years, so we are not just looking at 1906 black and gold shoes, but 1908 pink and green shoes and all the rest). I don't think that any organization would sue without reasonable suspicion that Converse was trying to capitalize on the organization 's image and use it to sell their own product.

This is what the shoes look like: http://www.greekchat.com/gcforums/sh...light=converse

nuff said...
 

Those pictures should clear up any questions...

Re: Re: A waste of time
 

I believe that numbers can not be generically trademarked. The can only be trademarked in the context of a specific industry.

The fact that they're using the name "Greekpak" doesn't help their case any either.......

Don't you think a Greek or someone very familiar with the Divine Nine had to come up with this product? A general person wouldn't really make the connection between colors and dates, unless they were paying sharp attention or knew quite a bit about the Greek System already. Interesting....

PsychTau

What if Converse had wanted to pay for permission to use the colours and dates from the beginning to market these shoes to members of NPHC groups. Would your nationals have allowed this?

Thanks for posting these...
 

From looking at the pictures, I think this lawsuit is going to be based on a trade dress (not trademark) cause of action. I also think Converse tiptoed right up to the *very edge* of the line between legal and trade dress violation.

This is going to be an interesting case and I'll definitely be following it.

I am glad that action is being taken.

LOL!

I'm glad that action is being taken too. It is quite obvious that they are using D9 symbols, including dates and colors, to market them to NPHC members. Had they just used the colors, that's okay--after all, there's no lawsuit against Lilly! :p But, if she started emblazing Ivy leaves and 1908, or turtles and 1902...;)

Lastly, I would also trust a member of APhiA, who has long contributed positive posts to the discussions at hand, to know what terms are trademarked/tradedressed by his organization and which ones aren't.

I imagine so. It just comes down to a question of unauthorized merchandise. When you're selling merchandise that uses trademarks of a certain GLO, you have to pay for a license that allows you to do that. Every GLO has problems with people doing this, but most of the time they're small companies -- not large corporations like Converse. I imagine the decision to go after Converse was simply a matter of economics, since they stand to make a lot more money using the NPHC orgs' image than your average person making letter sweatshirts in their basement without a license.

The impression that I get is that within the "black community" HBGLOs are very recognizable. This has part to do with the fact that there are only nine of them, as opposed to 90-something NPC/NIC organizations, and part to do with the fact that they tend to be more involved with their organizations after graduations, and part to do with the fact that they do more work outside of the college community than we do (and I'm sure there are other factors too). So it wouldn't be very tough for someone who isn't Greek to be familiar with GLO colors and symbols, especially if they went to a HBCU or another college where the organizations generally have a strong precense.

I also want to point out that in NPHC organizations, the founding year seems to have more significance than it does in NIC/NPC. If you look at their websites, a lot of them include the founding year, as in www.aka1908.org. If you went to a school where Tri Delt was big, you might know that our colors were blue, gold and silver but probably not that we were founded in 1888. The impression that I get is that founding years are a more well-known fact to those familiar with the Divine Nine than they are with NPC/NIC groups.

Prediction
 

My guess is that this will not go to court. I think that Converse will settle with the NPHC groups on a licencing fee structure out of court, and that everyone will be happy.

at any rate they are cute shoes...just a shame 'bout the copyright stuff...

marissa

well, as long as only members of our organizations are the only ones who are buying them. it's like the T-shirts, line jackets, ect..it's all nalia, there are rules for this type of thing.

I don't know. You can obviously see the comparison, but I think converse has enough high priced payed lawyers they ran the idea past to make sure they couldn't get in trouble for it.

Big name companies don't usually do that kind of stuff on a whim without making sure they can get away with it.

But of course. It just seems stupid that converse wouldn't first get permission from each respective organization before making thse shoes.

Converse should have done their shoes like Nike (I seen them in Eastbay in the basketball section). The customer picks out the combination in colors and what text they want and where they want it. They avoided a lot of grief unlike Converse.
So now, whether if you are in a BGLO, WGLO, or WhateverGLO everyone can be happy :p

Link to customized shoes

Bump
 

Has anyone heard anything?

Click here & then click on the links for each GreekPak pair of shoes. It'll say no image is available but you can see the shoes after you click on the link.

Yeah...but if you take a quote off of the link that crzychx provided, it's almost like they're encouraging people to get a pair so people will *think* you're a member of the orgs, even if you're not:

"No matter your Greek association or affiliation, grab these quick for representation. "

Too bad there's such a fuss about the way Converse did it; they are really cute shoes.

Just to add something to PsychTau and sugar and spice's comments, you'd be surprised how many people outside "the black community" are VERY familiar with BGLOs and the revenue they can bring in. Look at the AT&T commercials with "Alpha Theta Theta" stepping. I'm sure the bigwigs at Converse, black or white, have a direct line to what's hot and profitable, and 'nalia is definitely close to the top of the list.

On another note, I've never seen the infamous shoes in a store, but I did notice that Nordstom had pink/green, and purple/gold Chucks, sans the year. I would imagine that they probably have blue/white, black/gold, and red/white too, since those are common color combinations. I wonder if they're trying to still capitalize on the market without putting themselves at too much litigation risk this time? :rolleyes:

At any rate, I have the light pink/green Kangaroos and I just got my mom some AKA sneakers, and both cost less than the Converses. They're not that cute anyway.