  United States Court of Appeals
      for the Federal Circuit
                ______________________

                 CONVERSE, INC.,
                    Appellant

                          v.

     INTERNATIONAL TRADE COMMISSION,
                 Appellee

    SKECHERS U.S.A., INC., NEW BALANCE
ATHLETICS, INC., FKA NEW BALANCE 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.
                ______________________

              Decided: October 30, 2018
               ______________________

    CHRISTOPHER J. RENK, Banner & Witcoff, Ltd., Chica-
go, IL, argued for appellant. Also represented by AARON
PATRICK BOWLING, MICHAEL JOSEPH HARRIS, AUDRA
CAROL EIDEM HEINZE; DALE M. CENDALI, Kirkland & Ellis
LLP, New York, NY; JOHN C. O'QUINN, Washington, DC.
2                                     CONVERSE, INC.   v. ITC



    CLINT A. GERDINE, Office of the General Counsel,
United States International Trade Commission, Washing-
ton, DC, argued for appellee.      Also represented by
DOMINIC L. BIANCHI, WAYNE W. HERRINGTON.

    MORGAN CHU, Irell & Manella LLP, Los Angeles, CA,
argued for intervenor Skechers U.S.A., Inc. Also repre-
sented by GRACE CHEN, SAMUEL KAI LU, JANE SHAY WALD;
BARBARA A. MURPHY, Foster, Murphy, Altman & Nickel,
PC, Washington, DC.

    MARK S. PUZELLA, Fish & Richardson, PC, Boston,
MA, argued for intervenors New Balance Athletics, Inc.,
HU Liquidation, LLC. Intervenor New Balance Athletics,
Inc. also represented by SHERYL GARKO, RICHARD DAVID
HOSP, ROBERT M. O'CONNELL, JR.; ELIZABETH EILLEENE
BRENCKMAN, New York, NY; THOMAS S. FUSCO, RICHARD
ALEX STERBA, Washington, DC. Intervenor HU Liquida-
tion, LLC also represented by JEFF E. SCHWARTZ, AUSTEN
CONRAD ENDERSBY, Fox Rothschild, LLP, Washington,
DC.

    GREGORY DOLIN, University of Baltimore School of
Law, Baltimore, MD, for amici curiae Saurabh Vishnub-
hakat, Gregory Dolin, Christopher Frerking, Hugh Han-
sen, Jay P. Kesan, Irina D. Manta, Kristen J. Osenga,
Eric Priest, Ted M. Sichelman.

     JAMES J. AQUILINA, II, Design IP, PC, Allentown, PA,
for amicus curiae Industrial Designers Society of America,
Inc.

   ADAM MOSSOFF, Antonin Scalia Law School, George
Mason University, Arlington, VA, for amicus curiae Adam
Mossoff.
CONVERSE, INC.   v. ITC                                     3



   MARK SCHULTZ, Antonin Scalia Law School, George
Mason University, Arlington, VA, for amicus curiae Mark
Schultz.

   CYNTHIA S. ARATO, Shapiro Arato LLP, New York,
NY, for amici curiae Fashion Law Institute, Christian
Louboutin SAS, Tiffany and Company. Also represented
by MARY CATHERINE BRENNAN, Fashion Law Institute,
New York, NY.

    DAVID HAL BERNSTEIN, Debevoise & Plimpton LLP,
New York, NY, for amici curiae All Market Inc., Case-
Mate, Inc., General Mills, Inc., Herman Miller, Inc.,
Honeywell International Inc., Mark Anthony Internation-
al SRL, Owens Corning Intellectual Capital, LLC, Prince-
ton Vanguard, LLC, Snyder’s-Lance, Inc.
                ______________________

  Before DYK, O’MALLEY, and HUGHES, Circuit Judges.
    Opinion for the court filed by Circuit Judge DYK.
  Opinion concurring-in-part, dissenting-in-part filed by
               Circuit Judge O’MALLEY.
DYK, Circuit Judge.
    Converse, Inc., appeals from a final determination of
the International Trade Commission (“ITC”) that held
invalid Converse’s trademark in the midsole design of its
Chuck Taylor All Star shoes, U.S. Trademark Registra-
tion No. 4,398,753 (“the ’753 trademark”). Because it
found the registered mark invalid and that Converse
could not establish the existence of common-law trade-
mark rights, the ITC determined there was no violation of
section 337 of the Tariff Act of 1930, as amended, 19
U.S.C. § 1337 (2012), by the importation of the accused
products. The ITC nonetheless addressed infringement,
finding that various accused products would have in-
fringed Converse’s mark if valid.
4                                     CONVERSE, INC.   v. ITC



    We hold that the ITC erred in applying the wrong
standard in aspects of both its invalidity and infringe-
ment determinations. We vacate and remand for further
proceedings.
                      BACKGROUND
    This case involves alleged infringement of Converse’s
rights in trade dress arising from the common law and its
trademark registration. The ’753 trademark was issued
to Converse on September 10, 2013, and describes the
trade-dress configuration of three design elements on the
midsole of Converse’s All Star shoes. In particular, as
described in the registration, “the mark 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
mark is depicted in a single drawing in the registration:




Converse asserts common-law rights in the same mark
predating its registration.
CONVERSE, INC.   v. ITC                                  5



    Section 337 provides a remedy at the ITC for, among
other things, “[t]he importation into the United States,
the sale for importation, or the sale within the United
States after importation by the owner, importer, or con-
signee, of articles that infringe a valid and enforceable
United States trademark registered under the Trademark
Act of 1946.” 19 U.S.C. § 1337(a)(1)(C). On October 14,
2014, Converse filed a complaint with the ITC alleging
violations of section 337 by various respondents in the
importation into the United States, the sale for importa-
tion, and the sale within the United States after importa-
tion of shoes that infringe its trademark. The ITC
instituted an investigation on November 17, 2014. Alt-
hough some of the respondents defaulted, several ap-
peared and actively participated in the ITC proceedings,
asserting that the accused products did not infringe the
mark and that, in any event, it was invalid. These re-
spondents have now intervened in Converse’s appeal and
are referred to herein as the intervenors.
    A central issue was whether the mark had acquired
secondary meaning. Converse asserted that it had ac-
quired secondary meaning, the mark having been used by
Converse since 1932. The intervenors, on the other hand,
disputed secondary meaning, claiming that Converse’s
use of the mark had not been substantially exclusive and
offering a survey (the Butler survey) concluding that
consumers did not associate the Converse mark with a
single source. The parties also disputed infringement.
Both the ITC Administrative Law Judge (“ALJ”) and the
ITC treated Converse as claiming two separate marks—a
common-law mark and a registered mark.
    On November 17, 2015, the ALJ issued an initial de-
termination finding violations of section 337 by the inter-
venors because the registered ’753 trademark was
infringed and not invalid, relying on the presumption of
secondary meaning afforded to the registered mark.
However, the ALJ found that Converse had not estab-
6                                      CONVERSE, INC.   v. ITC



lished secondary meaning for the common-law mark (but
that, if protectable, the common-law mark was infringed).
Converse, the intervenors, and the ITC staff petitioned for
review.
    On June 23, 2016, the ITC issued its final determina-
tion. The ITC reversed the ALJ’s finding of no invalidity
of the registered mark. The ITC found the registered
mark invalid in light of its determination that the mark
had not acquired secondary meaning. With respect to the
common-law mark, the ITC affirmed the ALJ’s finding
that the mark had not acquired secondary meaning. The
ITC determined that, if either trademark was not invalid
or protectable, it was infringed, affirming the ALJ’s
finding in this respect. The ITC refused to enter an
exclusion order with respect to any of the respondents,
including those who had defaulted. Converse timely
appealed, and we have jurisdiction under 28 U.S.C.
§ 1295(a)(6).
    The court held oral argument on February 8, 2018.
On June 7, 2018, the court requested supplemental brief-
ing on the following questions:
    1. Was Converse required to show priority in the
    mark (i.e., secondary meaning at the time of first
    infringement) without regard to the presumption
    of validity that would exist if the trademark regis-
    tration is valid?
    2. What significance does the registration of the
    mark or its validity have in these proceedings?
    3. Was it necessary or appropriate for the ITC to
    address the validity of the registered mark?
Converse, Inc. v. Int’l Trade Comm’n, 726 F. App’x 818,
819 (Fed. Cir. 2018) (per curiam) (nonprecedential order).
Each of the parties filed supplemental briefs in response.
CONVERSE, INC.   v. ITC                                   7



                          DISCUSSION
     We review the ITC’s legal determinations de novo and
its factual findings for substantial evidence. Cisco Sys.,
Inc. v. Int’l Trade Comm’n, 873 F.3d 1354, 1360–61 (Fed.
Cir. 2017). We conclude that the ITC made a series of
errors that require a remand. In Part I, we discuss the
relevant date for assessing secondary meaning, the signif-
icance of Converse’s trademark registration, and the
benefits arising from that registration. In Part II, we
define the factors to be weighed in determining whether a
mark has acquired secondary meaning. And in Part III,
we address the standard for evaluating likelihood of
confusion for the purposes of determining infringement.
I. The Timing of the Secondary Meaning Inquiry and the
         Relevance of Trademark Registration
    The ITC’s first error was failing to distinguish be-
tween alleged infringers who began infringing before
Converse obtained its trademark registration and those
who began afterward. This error was not identified as
such in Converse’s briefing, no doubt because the error
was beneficial to Converse. The intervenors argued in
their principal and supplemental briefs that the ITC erred
in this respect.
     In addressing these issues, we think that it is confus-
ing and inaccurate to refer to two separate marks—a
registered mark and a common-law mark. Rather, there
is a single mark, as to which different rights attach from
the common law and from federal registration. E.g., In re
Int’l Flavors & Fragrances Inc., 183 F.3d 1361, 1366 (Fed.
Cir. 1999) (“The federal registration of a trademark does
not create an exclusive property right in the mark. The
owner of the mark already has the property right estab-
lished by prior use . . . . However, those trademark owners
who register their marks with the [Patent and Trademark
Office (‘PTO’)] are afforded additional protection not
provided by the common law.”); In re Deister Concentrator
8                                       CONVERSE, INC.   v. ITC



Co., 289 F.2d 496, 501 (CCPA 1961) (“[T]he Lanham Act
does not create trademarks. While it may create some
new substantive rights in trademarks, unless the trade-
marks pre-exist there is nothing to be registered. Neither
does it create ownership, but only evidence thereof.”); 3 J.
Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition, § 19:3 (5th ed. 2017 & Supp. 2018) (“Alt-
hough a federal registration gives the owner of a mark
very important and valuable legal rights and benefits, the
registration does not create the trademark.”); see also
Matal v. Tam, 137 S. Ct. 1744, 1751 (2017) (quoting B &
B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293,
1299 (2015)) (“[F]ederal law does not create trademarks.”
(alteration in original)).
     Converse secured trademark registration for its trade
dress on September 10, 2013. Converse alleges that
before and after the date of registration the respondents
infringed that mark. To establish infringement of a
trademark under the Lanham Act, Converse must prove
“(1) it has a valid and legally protectable mark; (2) it owns
the mark; and (3) the defendant’s use of the mark to
identify goods or services causes a likelihood of confusion.”
ERBE Elektromedizin GmbH v. Canaday Tech. LLC, 629
F.3d 1278, 1287 (Fed. Cir. 2010) (quoting A & H Sports-
wear, Inc. v. Victoria’s Secret Stores, Inc., 237 F.3d 198,
210 (3d Cir. 2000)).
     All trademarks, in order to be valid or protectable,
must be distinctive of a product’s source, and “courts have
held that a mark can be distinctive in one of two ways.”
Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205,
210 (2000). “First, a mark is inherently distinctive if ‘[its]
intrinsic nature serves to identify a particular source.’”
Id. (alteration in original) (quoting Two Pesos, Inc. v. Taco
Cabana, Inc., 505 U.S. 763, 768 (1992)). “Second, a mark
has acquired distinctiveness, even if it is not inherently
distinctive, if it has developed secondary meaning, which
occurs when, ‘in the minds of the public, the primary
CONVERSE, INC.   v. ITC                                    9



significance of a [mark] is to identify the source of the
product rather than the product itself.’” Id. at 211 (alter-
ation in original) (quoting Inwood Labs., Inc. v. Ives Labs.,
Inc., 456 U.S. 844, 851 n.11 (1982)); see also 15 U.S.C.
§ 1052(f).
    Converse here seeks protection as to the intervenors
for a mark in the form of unregistered product-design
trade dress. The Supreme Court has held that unlike
word marks and product-packaging trade dress, product-
design trade dress can never be inherently distinctive.
Wal-Mart, 529 U.S. at 216. As a result, “a product’s
design is distinctive, and therefore protectable, only upon
a showing of secondary meaning.” Id. Accordingly,
Converse must show that its mark has acquired distinc-
tiveness, i.e., secondary meaning.
    The ITC’s decision never determined the relevant date
for assessing the existence of secondary meaning. The
ITC utilized 2003 (characterized as the “date of first
infringement”) as the relevant date in certain instances,
but also extensively cited to evidence from after 2003. On
appeal, the ITC contends that its finding should be read
to mean that Converse’s trademark had not acquired
secondary meaning at any time.
    Because the relevant date is so important to the sec-
ondary-meaning analysis, we find that a specific determi-
nation of secondary meaning as of the relevant date must
be made. In any infringement action, the party asserting
trade-dress protection must establish that its mark had
acquired secondary meaning before the first infringing
use by each alleged infringer. See, e.g., Braun, Inc. v.
Dynamics Corp. of Am., 975 F.2d 815, 826 (Fed. Cir. 1992)
(holding that “[a] claim of trade dress infringement fails if
secondary meaning did not exist before the infringement
began” and placing the burden of proof on the plaintiff);
2 McCarthy, supra, § 16:34 (noting that the purported
“senior user must prove the existence of secondary mean-
10                                     CONVERSE, INC.   v. ITC



ing in its mark at the time and place that the junior user
first began use of that mark” and collecting cases); Re-
statement (Third) of Unfair Competition § 19 cmt. b. (Am.
Law Inst. 1995 & Supp. 2018). In this respect, Converse
argues that it is entitled to rely on the presumption of
validity afforded to registered marks. We do not agree
that this presumption applies to infringement that began
before registration.
    For infringement in the period after registration, the
Lanham Act entitles the owner of the registered mark to a
presumption that the mark is valid, see 15 U.S.C.
§§ 1057(b), 1115(a), including that it has acquired second-
ary meaning, see 2 McCarthy, supra, § 11:43 (citing Lovely
Skin, Inc. v. Ishtar Skin Care Prods., LLC, 745 F.3d 877,
882 (8th Cir. 2014); Cold War Museum, Inc. v. Cold War
Air Museum, Inc., 586 F.3d 1352, 1356 (Fed. Cir. 2009)); 2
McCarthy, supra, § 15:34; 6 McCarthy, supra, § 32:134.
In the context of cancellation proceedings, we have held
that this presumption shifts both the burden of persua-
sion and the initial burden of production to the challenger
to rebut the presumption. Cold War, 586 F.3d at 1358;
see also Schaffer ex rel. Schaffer v. Weast, 546 U.S. 49, 56
(2005) (describing the difference between these “two
distinct burdens”). We see no reason why the effect of the
presumption should be any different in the infringement
context, and we join with the majority of circuits that
have held that the presumption shifts both burdens to the
party challenging secondary meaning. See 6 McCarthy,
supra, § 32:138 n.12 (collecting cases); Restatement
(Third) of Unfair Competition § 13 cmt. a. This result is
strongly supported by the legislative history of the Lan-
ham Act as thoroughly documented by Charles L. Cook
and Theodore H. Davis Jr., Litigating the Meaning of
“Prima Facie Evidence” Under the Lanham Act: The Fog
and Art of War, 103 Trademark Rep. 437, 459–86 (2013)
(showing that Congress repeatedly considered this ques-
CONVERSE, INC.   v. ITC                                  11



tion and expressly chose to shift the burden of persua-
sion).
    However, under the statute, the registration and its
accompanying presumption of secondary meaning operate
only prospectively from the date of registration, i.e., the
date on which the Patent and Trademark Office (“PTO”)
determined that secondary meaning had been acquired.
See 15 U.S.C. §§ 1052(f), 1057(a)–(b), 1115(a). This was
recognized by the Eighth Circuit in Aromatique, Inc. v.
Gold Seal, Inc., 28 F.3d 863, 870 (8th Cir. 1994) 1 and has
been approved by the relevant treatises. See 7 Louis
Altman & Malla Pollack, Callmann on Unfair Competi-
tion, Trademarks and Monopolies § 26:101 (4th ed. 2012
& Supp. 2018); 2 McCarthy, supra, §§ 11:53, 15:34.
    This rule is a straightforward application of the Lan-
ham Act, pursuant to which the PTO examines whether
secondary meaning has been acquired at the time of
registration. See 15 U.S.C. § 1052(f). The resulting
registration confers a presumption of secondary meaning
from that point in time, see id. §§ 1057(b), 1115(a), but at
the time of registration the PTO is not asked to determine
whether secondary meaning had been acquired at some
previous date, and therefore registration cannot support a
presumption for the period before registration. Indeed, on
a record such as this, with a multiyear gap between
infringement and registration, registration cannot even be
probative of secondary meaning at the time of infringe-
ment.


   1     The Aromatique court concluded that the marks
in question “may be presumed to have acquired secondary
meaning only as of” the date of registration, and as a
result, for purposes of proving secondary meaning as of a
date three years prior to registration, the owner of the
marks “[wa]s not entitled to the presumption.” Id.
12                                      CONVERSE, INC.   v. ITC



    Converse argued to the ITC that its registration enti-
tled it to a presumption of secondary meaning at any and
all times, including before registration. But Converse
identified no circuit court decisions in which this question
was squarely presented and decided in favor of Converse’s
position, and it relies on legislative history that predates
the Lanham Act by two decades and fails to address the
question at issue.
     We conclude that Converse’s registration confers a
presumption of secondary meaning beginning only as of
the date of registration and confers no presumption of
secondary meaning before the date of registration. Thus,
with respect to infringement by those respondents whose
first uses came before the registration (including all of the
intervenors), Converse must establish without the benefit
of the presumption that its mark had acquired secondary
meaning before the first infringing use by each respond-
ent.
    The intervenors contend that Converse has waived
any argument that it could prevail on its claims of pre-
registration infringement without the benefit of a pre-
sumption of secondary meaning. We do not think a
finding of waiver is appropriate here, given that our
opinion is clarifying and in some ways changing the legal
landscape with respect to proving secondary meaning.
Thus, we conclude that on remand, Converse has not
waived the argument that its mark acquired secondary
meaning even before the date of registration under the
appropriate standards, an issue we discuss in Part II
below.
    The question remains whether the issue of trademark
validity needs to be addressed by the ITC on remand. The
dissent argues that since the intervenors’ first infringe-
ment in all cases began before registration and the re-
maining respondents defaulted, trademark validity need
not be addressed in granting relief. In this respect the
CONVERSE, INC.   v. ITC                                  13



dissent relies on the provisions of 19 U.S.C. § 1337. 2
Dissenting Op. at 12–13. We decline to decide that issue
at this stage since it has not been addressed by either the
ITC or the parties. But Converse and the intervenors
assume that on remand further issues of validity remain
because the order sought is a general exclusion order.
Converse Suppl. Br. 11–12 (“The ITC also needed to
address Converse’s registered trademark when evaluating
Converse’s infringement claims as to infringements that
began after Converse registered the trademark. For those
infringements, as discussed above, Converse may rely on
its federal registration’s presumption of secondary mean-
ing to satisfy the first element of its infringement
claims.”); Intervenors’ Suppl. Br. 12 (“With respect to
parties other than the Intervenors who may be affected by
a GEO, it was both necessary and appropriate for the ITC
to consider the validity of the ’753 Registration”). On
their face, the 1988 amendments to the Tariff Act of 1930


   2    19 U.S.C. § 1337(g)(1)(C), which is cited by the
dissent, provides that where
   the person fails to respond to the complaint and
   notice or otherwise fails to appear to answer the
   complaint and notice . . . the Commission shall
   presume the facts alleged in the complaint to be
   true and shall, upon request, issue an exclusion
   from entry or a cease and desist order, or both,
   limited to that person unless, after considering
   the effect of such exclusion or order upon the pub-
   lic health and welfare, competitive conditions in
   the United States economy, the production of like
   or directly competitive articles in the United
   States, and United States consumers, the Com-
   mission finds that such exclusion or order should
   not be issued.
14                                     CONVERSE, INC.   v. ITC



(now section 1337(g)) only appear to authorize the entry of
an exclusion order “limited to that person,” i.e., the de-
faulting party and not a general exclusion order. 3 Wheth-
er the 1988 amendments, as the dissent urges, require the
entry of a general exclusion order without addressing
trademark validity or infringement is best addressed on
remand. 4
    If validity remains an issue, of course, the secondary-
meaning analysis should look to the date of registration.
See McCormick & Co. v. Summers, 354 F.2d 668, 674
(CCPA 1966) (“[R]egistrability of a mark must be deter-
mined on the basis of facts as they exist at the time when
the issue of registrability is under consideration.”). In
this case, that date was September 10, 2013.
II. The Standards for Determining Whether A Mark Has
             Acquired Secondary Meaning
    Converse argues that the ITC erred in its secondary
meaning analysis in a number of respects. We agree with
Converse in part, concluding that in some of the claimed
respects the ITC applied the wrong legal standard in its
determination of secondary meaning.



     3  See also H.R. Rep. No. 99-581, at 115 (1988)
(“However, a general exclusion order prohibiting the entry
of unfairly traded articles regardless of their source may
not be issued unless a violation of the Act has been estab-
lished by substantial, reliable, and probative evidence.”).
    4   We note in this connection that even before 1988
we had held in the patent context that the ITC cannot
consider validity as to defaulting parties. See Lannom
Mfg. Co. v. U.S. Int’l Trade Comm’n, 799 F.2d 1572 (Fed.
Cir. 1986). We do not decide whether the same approach
governs under the 1988 amendments with respect to
general exclusion orders or in the trademark context.
CONVERSE, INC.   v. ITC                                   15



                             A
     We first address the relevant factors. In assessing
whether the ’753 trademark had acquired secondary
meaning, the ITC weighed seven factors: “(1) the degree
and manner of use; (2) the exclusivity of use; (3) the
length of use; (4) the degree and manner of sales, adver-
tising, 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 meas-
ured by customer surveys).” J.A. 21. The ITC affirmed
the ALJ’s determination that factors 1, 3, 4, and 6 sup-
ported a finding of secondary meaning; that factor 5 was
neutral; and that factor 7 weighed against such a finding.
The ITC determined that the ALJ had erred, however, in
finding factor 2 (exclusivity of use) to be neutral; instead,
the ITC found that it weighed against a finding of second-
ary meaning. Weighing all these factors, the ITC then
determined that the ’753 trademark had not acquired
secondary meaning and was, therefore, invalid.
   Each circuit that has addressed secondary meaning—
11 circuits in all—has formulated some version of a
multifactor test similar to the test adopted by the ITC. 5


    5   See, e.g., Flynn v. AK Peters, Ltd., 377 F.3d 13, 20
(1st Cir. 2004); Christian Louboutin S.A. v. Yves Saint
Laurent Am. Holding, Inc., 696 F.3d 206, 226 (2d Cir.
2012); Parks LLC v. Tyson Foods, Inc., 863 F.3d 220, 231
(3d Cir. 2017); Grayson O Co. v. Agadir Int’l LLC, 856
F.3d 307, 316 (4th Cir. 2017); Test Masters Educ. Servs.,
Inc. v. Robin Singh Educ. Servs., Inc., 799 F.3d 437, 445
(5th Cir. 2015), cert. denied, 137 S. Ct. 499 (2016); Gen.
Motors Corp. v. Lanard Toys, Inc., 468 F.3d 405, 418 (6th
Cir. 2006); Platinum Home Mortg. Corp. v. Platinum Fin.
Grp., Inc., 149 F.3d 722, 728 (7th Cir. 1998); Stuart Hall
16                                      CONVERSE, INC.   v. ITC



This Court has previously discussed certain factors that
are relevant to the analysis, which overlap to an extent
with those identified by the ITC. See, e.g., Coach Servs.,
Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1379 (Fed.
Cir. 2012) (“To determine whether a mark has acquired
secondary meaning, courts consider: advertising expendi-
tures and sales success; length and exclusivity of use;
unsolicited media coverage; copying of the mark by the
defendant; and consumer studies.”); see also Real Foods
Pty Ltd. v. Frito-Lay N. Am., Inc., Nos. 17-1959, -2009,
2018 WL 4781153, at *6 (Fed. Cir. Oct. 4, 2018) (quoting
Coach for same proposition); In re Steelbuilding.com, 415
F.3d 1293, 1300 (Fed. Cir. 2005) (“In determining whether
secondary meaning has been acquired, the Board may
examine copying, advertising expenditures, sales success,
length and exclusivity of use, unsolicited media coverage,
and consumer studies (linking the name to a source).”).
     Today we clarify that the considerations to be as-
sessed in determining whether a mark has acquired
secondary meaning can be described by the following six
factors: (1) association of the trade dress with a particular
source by actual purchasers (typically measured by cus-
tomer surveys); (2) length, degree, and exclusivity of use;
(3) amount and manner of advertising; (4) amount of sales
and number of customers; (5) intentional copying; and (6)
unsolicited media coverage of the product embodying the
mark. While the ITC’s test set forth length, degree, and
exclusivity of use as separate factors, we think that these


Co. v. Ampad Corp., 51 F.3d 780, 789–90 (8th Cir. 1995);
Miller v. Glenn Miller Prods., Inc., 454 F.3d 975, 991 (9th
Cir. 2006) (per curiam); Forney Indus., Inc. v. Daco of Mo.,
Inc., 835 F.3d 1238, 1253 (10th Cir. 2016); FN Herstal SA
v. Clyde Armory, Inc., 838 F.3d 1071, 1084 (11th Cir.
2016), cert. denied, 137 S. Ct. 1436 (2017). See generally 2
McCarthy, supra, § 15:30.
CONVERSE, INC.   v. ITC                                  17



considerations are substantially interrelated and should
be evaluated together. All six factors are to be weighed
together in determining the existence of secondary mean-
ing.
                             B
    Next, we address the significance of the trademark
owner’s and third parties’ prior uses of the mark. We
conclude that the ITC relied too heavily on prior uses long
predating the first infringing uses and the date of regis-
tration. The secondary meaning analysis primarily seeks
to determine what is in the minds of consumers as of the
relevant date, 6 and factor 2 must be applied with this
purpose in view. The most relevant evidence will be the
trademark owner’s and third parties’ use in the recent
period before first use or infringement.
    The Lanham Act itself sheds light on what constitutes
the most relevant period. Section 2(f) provides that in
assessing secondary meaning:
   The Director [of the PTO] may accept as prima fa-
   cie evidence that a mark has become distinctive,
   as used on or in connection with the applicant’s
   goods in commerce, proof of substantially exclu-
   sive and continuous use thereof as a mark by the
   applicant in commerce for the five years before the
   date on which the claim of distinctiveness is made.



   6    As noted above, in order to prevail on a claim of
infringement, secondary meaning must have been ac-
quired by the date of first infringing use. To the extent an
alleged infringer challenges the present validity of the
asserted trademark registration, validity depends on
whether the mark had acquired secondary meaning as of
the date of registration.
18                                     CONVERSE, INC.   v. ITC



15 U.S.C. § 1052(f) (emphasis added). A somewhat differ-
ent, ten-year rule had previously been enacted in 1905.
See Act of Feb. 20, 1905, ch. 592, § 5, 33 Stat. 724, 726.
Describing marks subject to that 1905 law, the Supreme
Court noted, “Their exclusive use as trademarks for the
stated period was deemed, in the judgment of Congress, a
sufficient assurance that they had acquired a secondary
meaning as the designation of the origin or ownership of
the merchandise to which they were affixed.” Thaddeus
Davids Co. v. Davids, 233 U.S. 461, 470 (1914).
    Today’s five-year rule was enacted in substantially its
present form in 1946. See Act of July 5, 1946 (Lanham
Act), ch. 540, § 2(f), 60 Stat. 427, 429. Remarking on the
shift from ten to five years and relying on Davids, the
Eighth Circuit found “it must follow that Congress in
establishing the new and different prerequisite of five
years . . . now deems that period of such use adequate.”
Curtis-Stephens-Embry Co. v. Pro-Tek-Toe Skate Stop Co.,
199 F.2d 407, 413 (8th Cir. 1952).
    To be sure, section 2(f) sets up an evidentiary rule for
the Director rather than courts. But the Supreme Court
has noted “that the general principles qualifying a mark
for registration under § 2 of the Lanham Act are for the
most part applicable” in other trademark proceedings,
such as suits seeking to enforce unregistered marks under
15 U.S.C. § 1125(a). Two Pesos, 505 U.S. at 768. And
several other courts of appeals, drawing on section 2(f),
have found five years’ substantially exclusive and contin-
uous use to weigh strongly in favor of a finding of second-
ary meaning. See Thomas & Betts Corp. v. Panduit Corp.,
138 F.3d 277, 295–96 (7th Cir. 1998); Sunbeam Prods.,
Inc. v. W. Bend Co., 123 F.3d 246, 255 (5th Cir. 1997),
abrogated on other grounds by TrafFix Devices, Inc. v.
Mktg. Displays, Inc., 532 U.S. 23 (2001); Stuart Hall, 51
F.3d at 789–90. But see FN Herstal, 838 F.3d at 1084
(declining to rely on section 2(f)).
CONVERSE, INC.   v. ITC                                  19



    We agree with those circuits that recognize the im-
portance of looking to this five-year period. While section
2(f) cannot be read as limiting the inquiry to the five
years before the relevant date, it can and should be read
as suggesting that this period is the most relevant. As a
result, in evaluating factor 2, the ITC should rely princi-
pally on uses within the last five years. The critical issue
for this factor is whether prior uses impacted the percep-
tions of the consuming public as of the relevant date. See
Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee en 1772, 396 F.3d 1369, 1373–74 (Fed. Cir. 2005)
(making a similar point in the likelihood-of-confusion
context). Consumers are more likely to remember and be
impacted in their perceptions by third-party uses within
five years and less likely with respect to older uses. We
recently applied similar, common-sense reasoning in the
trademark opposition context, finding that survey results
were probative, at best, of the public’s perception five
years after the survey was conducted. Royal Crown Co. v.
Coca-Cola Co., No. 2016-2375, 2018 WL 3040163, at *8
(Fed. Cir. June 20, 2018).
     Therefore, uses older than five years should only be
considered relevant if there is evidence that such uses
were likely to have impacted consumers’ perceptions of
the mark as of the relevant date. For example, this might
be the case where a particular advertising campaign has
been in use for longer than five years. The ITC’s determi-
nation relied heavily on evidence—both as to Converse’s
use and the use by competitors—far predating the rele-
vant timeframe. Evidence older than this five-year period
should be reevaluated on remand to determine whether it
is relevant.
                             C
    In considering exclusivity of use—that is, whether the
trademark owner’s use of the mark was substantially
exclusive—it appears the ITC considered prior third-party
20                                     CONVERSE, INC.   v. ITC



uses of shoes with designs that were not substantially
similar to the ’753 trademark. The ITC cited historical
examples as a “third-party use of the [’753 trademark]” or
“shoes bearing the [trademark].” J.A. 28. But several of
the instances of third-party use cited in the ITC’s decision
are shoes that bear at most a passing resemblance to the
’753 trademark. Many more are missing at least one of
the elements of the ’753 trademark. Still others are
reproduced in such poor resolution that no reasonable
comparison can be made. Examples of prior uses that
may not be substantially similar are set forth in the
Appendix to this opinion.
     Although we agree with the ITC that evidence of the
use of similar but not identical trade dress may inform
the secondary-meaning analysis, we think such uses must
be substantially similar to the asserted mark. See Echo
Travel, Inc. v. Travel Assocs., Inc., 870 F.2d 1264, 1266,
1269 (7th Cir. 1989) (weighing prior use of marks de-
scribed as “substantially similar” and “substantially
identical”); Sweetheart Plastics, Inc. v. Detroit Forming,
Inc., 743 F.2d 1039, 1045 (4th Cir. 1984) (approving of the
admission of evidence of “substantially identical” and
“substantially similar” designs as “probative of the extent
and nature of exclusivity of use”); Scarves by Vera, Inc. v.
Todo Imports Ltd., 544 F.2d 1167, 1174 (2d Cir. 1976)
(criticizing reliance on prior uses of marks that were
insufficiently similar). Here, the ITC made no determina-
tion as to which of the prior uses were substantially
similar to the ’753 trademark and relied on at least some
that were not. On remand, the ITC must constrain its
analysis of both Converse’s use and the use by its compet-
itors to marks substantially similar to Converse’s regis-
tered mark.
                             D
    The ITC also placed considerable weight on survey ev-
idence submitted by the intervenors (the CBSC only
CONVERSE, INC.   v. ITC                                 21



Butler survey) to support its determination that the mark
had not acquired secondary meaning. 7 We agree with
amici that surveys are sometimes difficult to use as
evidence of historic secondary meaning. Amicus Br. of All
Market Inc. 29. This is because “[t]he relevant consumer
population for assessing consumer attitudes at a point in
the past is a group of consumers at that point in the past”
and “[a] contemporaneous survey commissioned for litiga-
tion obviously cannot access such a pool of respondents.”
Id. at 29. Thus, the ITC should only give such survey
evidence “weight appropriate to the extent that it sheds
light on consumer perceptions in the past.” 2 McCarthy,
supra, § 16:34.
     We think the Butler survey likely has little relevance
with respect to the issue of secondary meaning for the
intervenors.    The intervenors’ expert, Sarah Butler,
surveyed respondents in the spring of 2015 to determine
whether they associated the ’753 trademark with a single
source. Converse did not dispute that a survey taken two
years after the registration is relevant to determining
secondary meaning as of the date of registration. On
remand, however, the ITC must consider whether Con-
verse’s mark had acquired secondary meaning as of each
first infringing use by each intervenor, the earliest of
which is more than ten years before the date of the Butler
survey and the latest of which is likely more than five


   7    The ALJ had rejected eight other surveys—five of-
fered by Converse and three by the intervenors—
primarily because they used improper test and control
images. In its reply brief, Converse argues that the ITC
erred in rejecting a survey conducted by one of Converse’s
experts, Dr. Gerald Ford. But that argument was not
sufficiently articulated in Converse’s opening brief to
preserve it. See, e.g., Evans v. Bldg. Materials Corp. of
Am., 858 F.3d 1377, 1381–82 (Fed. Cir. 2017).
22                                     CONVERSE, INC.   v. ITC



years before the Butler survey. Thus, with respect to
Converse’s claims of infringement against the intervenors,
the ITC should give the Butler survey little probative
weight in its analysis, except to the extent that the Butler
survey was within five years of the first infringement by
one of the intervenors. See generally Commerce Nat’l. Ins.
Servs., Inc. v. Commerce Ins. Agency, Inc., 214 F.3d 432,
440 (3d Cir. 2000) (recency of survey contributed to its
being “wholly irrelevant to whether CBI established
secondary meaning in the ‘Commerce’ mark as of 1983”).
    If on remand, secondary meaning at the time of the
registration remains an issue, the Butler survey may
have relevance since it was conducted within two years of
the registration; indeed, Converse does not object to the
use of the Butler survey on the ground that it is too
distant in time. Surveys that are conducted within five
years of the relevant date may provide evidence as to
secondary meaning although “[n]o single factor is deter-
minative.” In re Steelbuilding.com, 415 F.3d at 1300.
    Butler concluded that the ’753 trademark had a 21.5%
net rate of association with a single source, a rate of
association that the ALJ found “insufficient to establish
secondary meaning” at the time of registration. J.A. 88.
The ITC found that the Butler survey “weighs against a
finding of secondary meaning,” J.A. 26, relying on the
ALJ’s conclusion that the survey was “insufficient to
establish secondary meaning,” J.A. 88. We see no error in
the conclusion that the survey does not establish second-
ary meaning, but we are unclear as to the ITC’s reasoning
as to why the survey supports the opposite—a lack of
secondary meaning. On appeal the intervenors argue
that the Butler survey affirmatively supports their posi-
tion—showing lack of secondary meaning. Converse
argues that the Butler survey is flawed and should be
given no weight. We do not resolve this issue which is a
matter for the ITC in the first instance. In any remand
where secondary meaning as of the time of registration is
CONVERSE, INC.   v. ITC                                 23



a relevant issue, the Board should analyze whether the
survey shows lack of secondary meaning as of the date of
registration. Unless the survey affirmatively shows a
lack of secondary meaning, there is simply a lack of
survey evidence of secondary meaning—which is a neu-
tral factor favoring neither party.
III. The Standards for Determining Likelihood of Confu-
                         sion
                            A
    The intervenors also contend that the ITC erred in
finding a likelihood of confusion––and, therefore, in-
fringement––with respect to accused products that lacked
one or more elements of the ’753 trademark. For exam-
ple, the intervenors point out that the ITC found no
infringement by an accused product missing one of the
’753 trademark’s elements (two stripes on the midsole)
but did find infringement by two other accused products
missing a different element (the multi-layered toe bumper
featuring diamonds and line patterns). The ALJ’s only
explanation for these different results was that, in the
former case, “[t]he differences in these shoe models are
not drastic enough to overcome the similarities.” J.A. 151.
     The likelihood-of-confusion analysis for determining
infringement turns in part on the similarity of the ac-
cused products to the asserted mark. See, e.g., Nautilus
Grp., Inc. v. Icon Health & Fitness, Inc., 372 F.3d 1330,
1334–35 (Fed. Cir. 2004). We described earlier that, in
the invalidity determination, marks that are not substan-
tially similar cannot be considered. In the context of
trade-dress infringement, we also hold that accused
products that are not substantially similar cannot in-
fringe. See Versa Prods. Co. v. Bifold Co. (Mfg.), 50 F.3d
189, 202 (3d Cir. 1995) (“[S]ubstantial similarity of ap-
pearance is necessarily a prerequisite to a finding of
likelihood of confusion in product configuration cases.”);
see also Eng’g Dynamics, Inc. v. Structural Software, Inc.,
24                                    CONVERSE, INC.   v. ITC



26 F.3d 1335, 1350 (5th Cir. 1994) (“The Lanham Act
prohibits passing off goods or services as those of a com-
petitor by employing substantially similar trade dress
which is likely to confuse consumers as to the sources of
the product.”), modified on other grounds, 46 F.3d 408
(5th Cir. 1995). We have applied an analogous require-
ment in the design-patent context, where infringement
cannot be found unless an ordinary observer would per-
ceive that the “two designs are substantially the same.”
Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 670
(Fed. Cir. 2008) (en banc) (quoting Gorham Co. v. White,
81 U.S. 511, 528 (1871)).
    On remand, the ITC should reassess the accused
products to determine whether they are substantially
similar to the mark in the infringement analysis.
                            B
    Finally, the intervenors present other arguments in
favor of affirmance, none of which we find persuasive.
    First, the intervenors assert that the brand-name la-
beling of the accused products was dispositive of the
likelihood of confusion as a matter of law. Contrary to the
intervenors’ argument, we have not held that such label-
ing is always legally sufficient to avoid likelihood of
confusion but rather that those labels may be highly
probative evidence. See, e.g., Conopco, Inc. v. May Dep’t
Stores Co., 46 F.3d 1556, 1570–71 (Fed. Cir. 1994); Braun,
975 F.2d at 828; Litton Sys., Inc. v. Whirlpool Corp., 728
F.2d 1423, 1446–47 (Fed. Cir. 1984), abrogated on other
grounds by Two Pesos, 505 U.S. 763; see also 1 McCarthy,
supra, § 8:16; 4 id. § 23:53. The ALJ did not misapply
this rule.
    Second, one intervenor contends that the ITC erred by
finding infringement absent evidence that its products
have harmed Converse’s reputation. Neither case cited by
the intervenor establishes such a prerequisite to a finding
CONVERSE, INC.   v. ITC                                 25



of infringement. See Gen. Motors Corp. v. Keystone Auto.
Indus., Inc., 453 F.3d 351, 356–59 (6th Cir. 2006); Payless
Shoesource, Inc. v. Reebok Int’l Ltd., 998 F.2d 985, 989–90
(Fed. Cir. 1993).
     Third, the intervenors argue that the ’753 trademark
is functional and hence not protectable. We find no error
in the ITC’s determination that the mark is nonfunction-
al. Any functional benefit is derived from the presence of
toe caps and bumpers generally, not the particular design
of the ’753 trademark, and there are numerous commer-
cial alternatives to that design. See, e.g., In re Morton-
Norwich Prods., Inc., 671 F.2d 1332, 1338–39 (CCPA
1982).
                          CONCLUSION
    We vacate and remand to the ITC for further proceed-
ings consistent with this opinion.
               VACATED AND REMANDED
                            COSTS
   No costs.
26                  CONVERSE, INC.   v. ITC



      APPENDIX




     J.A. 40,928.




     J.A. 41,738.
CONVERSE, INC.   v. ITC                  27




                          J.A. 42,824.
28                  CONVERSE, INC.   v. ITC




     J.A. 43,133.
  United States Court of Appeals
      for the Federal Circuit
                ______________________

                  CONVERSE, INC.,
                     Appellant

                           v.

     INTERNATIONAL TRADE COMMISSION,
                 Appellee

    SKECHERS U.S.A., INC., NEW BALANCE
ATHLETICS, INC., FKA NEW BALANCE 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.
                ______________________

O’MALLEY, Circuit Judge, concurring-in-part and dissent-
ing-in-part.
   I agree with the majority that the International Trade
Commission (“ITC” or “Commission”) erred in its legal
analysis in this matter and that its decision must be
vacated. I also agree that a remand is appropriate. I
2                                      CONVERSE, INC.   v. ITC



even agree with many of the ways in which the majority
finds that the ITC erred. 1 I cannot join in the majority’s
reasoning, however, because I believe that the majority
overlooks important procedural facts and binding statuto-
ry authority to reach issues that are not properly before
us. Thus, I do not agree with the majority’s decision to
remand questions regarding the validity of the registered
mark for further consideration or its decision to even
address questions of infringement. And, I cannot accede
to the majority’s failure to order the ITC to enter a reme-
dy against the parties found in default in the proceedings
below or to explain why public interest concerns would
justify not doing so.
     Specifically,  I   believe    that    the    majority:
(1) misperceives the scope of the ITC’s authority to invali-
date duly issued intellectual property rights when it
addresses the issue of the validity of a registered mark;
(2) blurs the line between the concepts of priority of use
under common law and the validity of a registered mark;
(3) espouses advisory—and unnecessary—opinions on the
weight to be given certain survey evidence and the ques-
tion of infringement; and (4) ignores the ITC’s statutory
obligation to enter remedies against defaulting parties.
Thus, except where otherwise noted, I concur only in the



    1    In particular, I agree that the ITC erred when it
failed to distinguish between alleged infringers whose
first uses began before Converse obtained its registered
mark and those whose first uses began afterward. I also
agree that, in order to prevail against the intervenors,
Converse must establish that its mark had acquired
distinctiveness before each first use by each intervenor
and that it must do so without the benefit of the presump-
tion of acquired distinctiveness that is afforded registered
marks.
CONVERSE, INC.   v. ITC                                     3



conclusion that the ITC’s findings must be vacated, and
the matter remanded to the ITC for further analysis. I
dissent from the fact that the majority discusses matters
not properly before us and from the nature of the remand
the majority outlines.
     I begin with a discussion of the ITC’s authority and
how that impacts the scope of our review on appeal. The
majority rightly finds fault with the ITC’s failure “to
distinguish between alleged infringers who began infring-
ing before Converse obtained its trademark registration
and those who began afterward.” Majority Op. at 7. But,
the majority makes the same mistake when it considers
and passes judgment on the ITC’s determination regard-
ing the validity of the registered mark. The ITC has no
authority to invalidate a trademark—or patent for that
matter—except and to the extent the validity of either is
asserted as a defense to and is, thus, relevant to the
question of whether an accused infringer can be liable for
infringement. See Kinik Co. v. Int’l Trade Comm’n., 362
F.3d 1359, 1367 (Fed. Cir. 2004) (concluding that the ITC
has “no authorization to determine patent validity when
that defense was not raised”). Indeed, where a respond-
ent seeks a declaration of invalidity by way of a counter-
claim, rather than as a mere defense to infringement, it is
statutorily required to remove that counterclaim to dis-
trict court. 19 U.S.C. § 1337(c) (“Immediately after a
counterclaim is received by the Commission, the respond-
ent raising such counterclaim shall file a notice of removal
with a United States district court in which venue for any
of the counterclaims raised by the party would exist under
section 1391 of Title 28.”); see 28 U.S.C. § 1368 (“The
district courts shall have original jurisdiction of any civil
action based on a counterclaim raised pursuant to section
337(c) of the Tariff Act of 1930, to the extent that it arises
out of the transaction or occurrence that is the subject
matter of the opposing party’s claim in the proceeding
under section 337(a) of that Act.”)
4                                      CONVERSE, INC.   v. ITC



    The validity of Converse’s registered trademark is not
relevant to the question of whether any remaining party
in this case is liable for infringement or has violated 19
U.S.C. § 1337. Only two types of accused infringers re-
main in this case—(1) the defaulting parties, who acqui-
esced to Converse’s claims and whose first uses began
after the date of registration, and (2) the intervenors, who
actively participated in the proceeding and whose first
uses began before the date of registration. The validity of
the registered mark is not relevant to Converse’s claims
against any of those parties.
    The defaulting parties, by virtue of defaulting, never
challenged Converse’s claims of infringement or the
validity of the registered mark. Even the majority admits
that our opinion in Lannom Mfg. Co. v. Int’l Trade
Comm’n, 799 F.2d 1572 (Fed. Cir. 1986) stands for the
proposition “that the ITC cannot consider validity as to
defaulting parties.” Majority Op. at 14 n.4. Because the
ITC may only assess validity when raised as a defense to
a claim of infringement, the ITC’s ruling with respect to
the registered mark was neither necessary nor appropri-
ate as to those parties. The same is true with respect to
the claims against the intervenors, but for different
reasons. Because Converse concedes that the intervenors
all began their allegedly infringing uses well before the
date of registration (as the majority correctly concludes),
the intervenors cannot be liable for infringement of the
registered mark. That means that the ITC’s discussion of
the validity of the registered mark was neither necessary
nor appropriate with respect to those respondents either.
    The majority recognizes that registration is irrelevant
to uses beginning before the date of registration when it
concludes that “Converse’s registration confers a pre-
sumption of secondary meaning beginning only as of the
date of registration and confers no presumption of sec-
ondary meaning before the date of registration.” Majority
Op. at 12. It even admits that Converse only “seeks
CONVERSE, INC.   v. ITC                                   5



protection as to the intervenors for a mark in the form of
unregistered product-design.” Majority Op. at 9 (empha-
sis added). But it then questions the logical impact of its
own conclusion when it asks “whether the issue of trade-
mark validity needs to be addressed by the ITC on re-
mand.” Majority Op. at 12. And, it does so again when it
concludes that the question of whether the validity of the
mark needs to be addressed on remand is, itself, “best
addressed on remand.” Majority Op. at 14. But, whether
the validity of the registered mark has any impact on pre-
registration uses is a legal question. Indeed, it is one the
majority decides, but from which it then backs away.
    The majority then adds to the uncertainty of its hold-
ing by continuing at some length to consider the ITC’s
determination regarding the validity of the registered
mark—implying it sees some relevance to that analysis—
and ultimately remanding for further consideration of
that question. 2 Majority Op. at 14–23. It does so without



   2    The majority attempts to justify this by stating
that both “Converse and the intervenors assume that on
remand further issues of validity remain because the
order sought is a general exclusion order.” Majority Op.
at 13. In other words, it implies that Converse’s request
for a general exclusion order could somehow put the
validity of the registered mark at issue. It provides no
legal support for this implication, however. Indeed, there
is no support in the relevant statutory sections or our case
law for the proposition that the ITC’s authority to deter-
mine the scope of a remedy could independently confer
the authority to assess the validity of a registered mark.
While the ITC may assess what remedy, or combination of
remedies, to issue upon default, it must do so with a
recognition that an unchallenged registered mark must be
presumed valid.
6                                     CONVERSE, INC.   v. ITC



identifying a single respondent in this appeal, or who was
actively involved in the proceedings when the ITC issued
its decision, for whom the validity of the registered mark
is relevant to Converse’s claims of infringement. In fact,
the record is devoid of any indication that any such party
remains.
     The majority glosses over the procedural facts in this
case that establish that no active respondent remains
whose first use began after registration. When discussing
the procedural background, the majority states that
“Converse filed a complaint with the ITC alleging viola-
tions of section 337 by various respondents,” and that,
“[a]lthough some of the respondents defaulted, several
appeared and actively participated in the ITC proceed-
ings.” Majority Op. at 5 (emphases added). What the
majority fails to mention is that these “several” respond-
ents who “appeared and actively participated” comprise
only the four intervenors whose earliest first uses predate
the date of registration. A careful review of the procedur-
al history and record below confirms this.
    On October 14, 2014, Converse filed a complaint with
the ITC alleging violations of § 1337 by 31 respondents.
On January 12, 2015, an additional party, New Balance
Athletic Shoe, Inc., intervened, bringing the total number
of respondents to 32. 3 J.A. 54. Five of these respondents,


    3   (1) Shenzhen Foreversun Industrial Co., Ltd.
a/k/a Shenzhen Foreversun Shoes Co., Ltd.; (2) Dioniso
SRL; (3) Fujian Xinya I&E Trading Co. Ltd.; (4) Zhejiang
Ouhai International Trade Co. Ltd.; (5) Wenzhou Cereals
Oils & Foodstuffs Foreign Trade Co. Ltd.; (6) Hitch En-
terprises Pty Ltd d/b/a Skeanie; (7) PW Shoes Inc.;
(8) Ositos Shoes, Inc. d/b/a Collection’O; (9) Ralph Lauren
Corporation; (10) OPPO Original Corp.; (11) H&M
Hennes & Mauritz LP; (12) Zulily, Inc.; (13) Nowhere Co.,
CONVERSE, INC.   v. ITC                                  7



identified above as the defaulting parties, acquiesced to
Converse’s claims by defaulting. 4 As noted, none of the
defaulting parties contested Converse’s allegations that
they violated and continue to violate § 1337 by the impor-
tation of products that infringe a registered mark. J.A.
56. And none asserted defenses—based on the invalidity
of the registered mark or otherwise—to Converse’s claims
of infringement. Exactly 21 of the remaining 27 respond-
ents settled with Converse. 5 Finally, two other respond-


Ltd. d/b/a Bape; (14) Aldo Group; (15) Gina Group, LLC;
(16) Tory Burch LLC; (17) Brian Lichtenberg, LLC;
(18) FILA U.S.A., Inc.; (19) Mamiye Imports LLC d/b/a
Lilly of New York; (20) Shoe Shox; (21) Iconix Brand
Group, Inc. d/b/a Ed Hardy; (22) A-List, Inc. d/b/a Kitson;
(23) Esquire Footwear, LLC; (24) Fortune Dynamic, Inc.;
(25) Cmerit USA, Inc., d/b/a Gatta Flurt; (26) Kmart
Corporation; (27) Orange Clubwear, Inc.; (28) Edamame
Kids, lnc.; (29) Skechers U.S.A., Inc.; (30) Wal-Mart
Stores, Inc.; (31) HU Liquidation, LLC, f.k.a. Highline
United LLC; (32) New Balance Athletics, Inc., f.k.a. New
Balance Athletic Shoe, Inc. J.A. 53–54.
    4   Respondents (1)–(5) defaulted: (1) Shenzhen
Foreversun Industrial Co., Ltd. a/k/a Shenzhen Forever-
sun Shoes Co., Ltd.; (2) Dioniso SRL; (3) Fujian Xinya
I&E Trading Co. Ltd.; (4) Zhejiang Ouhai International
Trade Co. Ltd.; and (5) Wenzhou Cereals Oils & Food-
stuffs Foreign Trade Co. Ltd. J.A. 11.
    5   Respondents (6)–(26) settled: (6) Hitch Enter-
prises Pty Ltd d/b/a Skeanie; (7) PW Shoes Inc.; (8) Ositos
Shoes, Inc. d/b/a Collection’O; (9) Ralph Lauren Corpora-
tion; (10) OPPO Original Corp.; (11) H&M Hennes &
Mauritz LP; (12) Zulily, Inc.; (13) Nowhere Co., Ltd. d/b/a
Bape; (14) Aldo Group; (15) Gina Group, LLC; (16) Tory
Burch LLC; (17) Brian Lichtenberg, LLC; (18) FILA
U.S.A., Inc.; (19) Mamiye Imports LLC d/b/a Lilly of New
8                                       CONVERSE, INC.   v. ITC



ents moved to terminate based on a consent order or for
good cause pursuant to ITC Rule 210.21(a)(1). 6 These
motions were granted. Thus, the arithmetic shows that,
at the time that the Administrative Law Judge (“ALJ”)
issued the Initial Determination on November 17, 2015,
23 of the total 32 initial respondents no longer remained
in the case and five of the remaining nine respondents
had defaulted. J.A. 52–56. Only Skechers U.S.A., Inc.,
Wal-Mart Stores, Inc., HU Liquidation, LLC, f.k.a. High-
line United LLC, New Balance Athletics, Inc., f.k.a. New
Balance Athletic Shoe, Inc., identified above as the inter-
venors, actively participated in the Investigation. J.A.
56. 7 And, as noted, these intervenors are “those respond-
ents whose first uses came before the registration.”
Majority Op. at 12. It is clear then that no parties remain


York; (20) Shoe Shox; (21) Iconix Brand Group, Inc. d/b/a
Ed Hardy; (22) A-List, Inc. d/b/a Kitson; (23) Esquire
Footwear, LLC; (24) Fortune Dynamic, Inc.; (25) Cmerit
USA, Inc., d/b/a Gatta Flurt; (26) Kmart Corporation. J.A
54 n.4. The ITC appeared to reference Shoe Shox and
Skechers U.S.A., Inc. (“Skechers”) as a single party when
identifying the list of initial respondents, J.A. 54, but then
treated Shoe Shox as a separate party from Skechers
when it identified Shoe Shox, but not Skechers, as one of
the 21 parties who settled with Converse, J.A. 54 n.4.
Significantly, Converse’s complaint lists the two entities
as separate respondents. J.A. 373–74. To avoid confu-
sion, we list and treat Shoe Shox as a separate entity from
Skechers.
    6   Respondents (27)–(28) terminated proceedings:
(27) Orange Clubwear, Inc.; (28) Edamame Kids, lnc.
J.A. 56 n.6, 7.
    7   Wal-Mart Stores, Inc. has recently withdrawn
from this appeal. Order Granting Wal-Mart’s Mot. to
Withdraw 2, ECF No. 233.
CONVERSE, INC.   v. ITC                                   9



whose earliest first uses began after registration and who
also actively participated in the case. Thus, the relevant
and only question is who has priority of use of a common
law trade dress. The validity of the registered mark is
irrelevant to that question. 8
     This leads me to my second concern with the majori-
ty’s opinion—that it blurs the line between the concept of
priority of use under common law and the concept of the
validity of a registered mark. The above timeline estab-
lishes that the only issue properly before this court as it
relates to the mark is the priority of use of an alleged
common law right to the mid-sole trade dress. Yet the
majority goes on to assess the validity of the registered
mark even though no respondents remain for whom the
registered mark is relevant. The natural, but demonstra-
bly false implication of the majority’s position is that a
later-obtained registration is somehow relevant to estab-
lishing priority of use at an earlier date. This is contrary
to our precedent stating that “[a] claim of trade dress
infringement fails if secondary meaning did not exist
before the infringement began.” Braun Inc. v. Dynamics
Corp. of Am., 975 F.2d 815, 826 (Fed. Cir. 1992). Indeed,
a party with priority of use may continue to use a mark
without infringing even if the mark later acquires distinc-
tiveness—demonstrated through registration or other-
wise. See Saratoga Vichy Spring Co., Inc. v. Lehman, 625
F.2d 1037, 1043 (2d Cir. 1980) (“Even if Saratoga Vichy
has rights in the name ‘Saratoga’ because its use of the



   8    The intervenors do not assert that they can show
acquired distinctiveness with respect to their own uses of
the mark, at any point in time. They claim only that
Converse cannot show that the mark acquired distinc-
tiveness vis-à-vis Converse as of the intervenors’ first
uses.
10                                     CONVERSE, INC.   v. ITC



name has acquired a secondary meaning, it could not
prevent the use of that term by one whose use had begun
before the secondary meaning was acquired.”).
     Here, if the intervenors are proven to have priority of
use, they cannot be found to infringe even if Converse’s
later-obtained registered mark were valid and the inter-
venors continued to use the mark today. The intervenors
argued exactly this point below, stating that they, as
“junior user[s] cannot infringe rights that do not exist,”
and that, “the circumstances do not change if the senior
user[, Converse,] later acquires secondary meaning (or a
registration)” because “a junior user’s permissible use
does not become infringing from mere continuation.”
Suppl. J.A. 19. Thus, the only question that could proper-
ly be before the ITC on remand is whether Converse can
show that its mark acquired distinctiveness as of each
first use by each intervenor. The majority’s attempt to
expand the scope of our review by considering the validity
of the registered mark conflates the concepts of the validi-
ty of a registered mark and priority of use. That Converse
mischaracterized the effect of the registered mark as it
relates to its claims against the intervenors, or that the
ITC seemed to misunderstand the extent of its authority
to invalidate a registered mark, cannot justify the majori-
ty’s decision to compound the confusion at the heart of the
ITC’s judgment.
    Another related concern is with the majority’s deci-
sion to pass judgment on the relevance or adequacy of the
Butler survey. Because the validity of the registered
mark is not at issue, any discussion of a clearly post-dated
survey is pure dicta. I agree with the majority that
surveys significantly postdating historical uses are not
relevant to the question of priority of use. This should
end any further discussion of the Butler survey. The
majority’s extended consideration of the merits of the
survey, including its suggestion that “the Butler survey
may have relevance since it was conducted within two
CONVERSE, INC.   v. ITC                                  11



years of the registration,” is inappropriate. 9 Majority Op.
at 22.
    My next concern with the majority opinion is in its as-
sessment of the ITC’s infringement analysis. Like its
discussion of the merits of the Butler survey, the majori-
ty’s discussion of the ITC’s infringement findings are
dicta. Indeed, that portion of the opinion is no more than
an advisory opinion. Again, because Converse’s claims
alleging infringement of the registered mark are relevant
only to Converse’s claims against the defaulting parties,
and the defaulting parties did not challenge Converse’s
infringement claims, the ITC must proceed on the as-
sumption that those parties did infringe the registered
mark at the time of their respective uses of the trade
dress covered by the mark. As to the intervenors, unless
and until a judgment of priority of use is established,
questions of infringement are not at issue. The question
of infringement—by any party—is either not at issue in
this appeal or not ripe for our review. Even the majority
acknowledges that the ITC’s infringement findings were
alternative findings and, thus, dicta, at the Commission
level itself. See Majority Op. at 6 (“The ITC determined
that, if either trademark was not invalid or protectable, it
was infringed. . . .” (emphasis added)); see also J.A. 35
(“The Commission affirms the ID’s finding that there is a
likelihood of confusion with respect to the [registered
mark] for specific accused footwear products if the [regis-
tered mark] is not invalid . . . .” (emphasis added)).
    Even if the issue of infringement were not dicta,
moreover, it is hard to see how the majority could con-
ceivably vacate the Commission’s findings. The ALJ


   9     If I were to consider the merits of the Butler sur-
vey at all, I would be less inclined than the majority is to
give it weight.
12                                       CONVERSE, INC.   v. ITC



made detailed findings under the factors set forth In re
E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361
(CCPA 1973). He specifically analyzed the question of
substantial similarity to the mark for each allegedly
infringing product, making factual findings as to each.
The ITC then adopted those findings. J.A. 119–55. Those
findings are findings of fact to which we owe deference.
Coach, 668 F.3d at 1365–66.
     My final concern with the majority’s opinion, and spe-
cifically the scope of its remand, is with its failure to
instruct the ITC to enter a remedy against all the default-
ing parties, or to justify its failure to do so by reference to
any relevant public interest concerns. The ITC is required
by statute to grant relief to Converse against the default-
ing parties. Specifically, 19 U.S.C. § 1337(g)(1) states
that, if any parties are found to be in default, then:
     the Commission shall presume the facts alleged in
     the complaint to be true and shall, upon request,
     issue an exclusion from entry or a cease and desist
     order, or both, limited to that person unless, after
     considering the effect of such exclusion order upon
     the public health and welfare, competitive condi-
     tions in the United States economy, the produc-
     tion of like or directly competitive articles in the
     United States, and United States consumers, the
     Commission finds that such exclusion or order
     should not be issued.
    This language requires the ITC to presume the facts
alleged in the complaint to be true and to provide some
form of relief against any parties found to be in default—
be it an exclusion order (general or limited), a cease and
desist order, or both. SAS Inst., Inc. v. Iancu, 138 S. Ct.
1348, 1354 (2018) (finding that the word “shall” means
“must” because it “generally imposes a nondiscretionary
duty.”); Boomerang Tube LLC v. United States, 856 F.3d
908, 912 (Fed. Cir. 2017) (explaining that “shall” connotes
CONVERSE, INC.   v. ITC                                    13



a requirement). The ITC may only refuse to do so based
on public interest factors unrelated to the validity of the
mark or whether that mark was infringed by the default-
ing parties.
     Such a presumption was not always the law. Con-
gress added the statutory section providing for default
judgments in the 1988 amendment to the Trade Act.
Prior to the amendment, the ITC could not issue a default
judgment without first finding a violation under § 1337.
See Certain Attache Cases, Inv. No. 337-TA-49, 1979 WL
61026, at *2–4 (USITC Mar. 1, 1979) (denying motion for
default judgment because record evidence failed to
demonstrate “that the importation of the infringing
articles does not have the effect or tendency to destroy or
substantially injure the domestic industry”). Thus, com-
plainants faced the same burden of proof even when the
named respondents had defaulted. In passing the 1988
amendment, Congress acknowledged that, without the
participation of a party in default, a complainant faced
difficulties proving facts sufficient to establish a violation
of § 1337. See In the Matter of Certain Elec. Skin Care
Devices, Inv. No. 337-TA-959, 2017 WL 8683854, at *14
(USITC Feb. 13, 2017) (“[D]iscovery is usually difficult, if
not impossible, to obtain from named respondents who
have chosen not to participate in an investigation.”).
Section 1377(g) addresses this by requiring the ITC to
“presume the facts alleged in the complaint to be true,”
and “upon request, issue appropriate relief solely against
that person.” See H.R. Rep. No. 100-576, at 636 (1988)
(Conf. Rep.).
    Against that backdrop, the majority’s remand instruc-
tion simultaneously does too much and too little. It does
too much by directing the ITC to further address the
validity and infringement of the registered mark, even
though the statute requires that the ITC presume that
Converse’s infringement allegations against the default-
ing parties are true and that its registered mark is valid.
14                                     CONVERSE, INC.   v. ITC



And it does too little by not directing the ITC to grant a
remedy against the defaulting parties unless it explains
why public interest factors would justify not doing so.
    Converse alleged that importation of the defaulting
parties’ accused products would violate § 1337, in part,
because the accused products infringe Converse’s regis-
tered mark. These parties undisputedly defaulted, and
Converse moved for default judgment. Thus, there is no
need to assess the strength of Converse’s allegations
against the defaulting parties; rather, we must instruct
the ITC to presume as true the facts alleged in Converse’s
complaint and to issue an exclusion order, a cease and
desist order, or both limited to the defaulting parties
unless the ITC determines that the public interest weighs
against such relief.
     For the reasons stated above, I believe the majority
stretches the scope of this court’s review beyond that
which is appropriate to express its views on issues that
are not properly before us. I also believe the majority
ignores its and the ITC’s obligation to order relief against
the defaulting parties. Therefore, I cannot join the major-
ity’s reasoning and must concur only in the decision to
vacate the ITC’s findings and to remand for further
proceedings. I dissent from both the majority’s considera-
tion of matters not before us and the nature of the re-
mand the majority orders.
