Aggressive Jeans

Posted by | February 09, 2011 | General | No Comments

Recognize this?

Levi Strauss & Co. (Levi’s) bets you do, and I am inclined to agree.

Levi’s is very, very serious about its trademarks, including the LEVIS jeans tab:

the stitching on its pockets, and even the back of their bottoms, with the tab visible:

Levi’s is so serious in fact, that it has 103 LIVE PTO Records (Levi’s first and oldest active registration — TWO HORSE for jeans — was filed in 1917.)  Levi’s also filed 280 trademark infringement lawsuits in U.S. alone in the past 20 years (at an average of 14 trademark cases per year; Levi’s outside counsel must be overjoyed!).  Yesterday the 9th Circuit handed Levi’s a (temporary) victory in one of its cases.

In its case against Abercrombie & Fitch, Levi’s claimed that the stitching on Abercrombie’s jeans pocket diluted Levi’s marks.  Under federal law, trademark dilution is a cause of action (grounds for lawsuit) afforded only to famous and well known marks.  Dilution by blurring is defined as “the association arising from the similarity between a mark or a trade name and a famous mark that impairs the distinctiveness of the famous mark,” under the Trademark Dilution Revision Act (TDRA).  The TDRA replaced the Federal Trademark Dilution Act (FTDA) as the portion of the Lanham Act (aka Trademark Act) that governs dilution actions in federal court.  The TDRA was enacted in 2006 as a result of the Supreme Court’s ruling in Moseley v. Victoria’s Secret, clarifying that dilution Plaintiffs need only prove likelihood of dilution, rather than actual dilution to succeed on their claims.

At issue in the Levi’s v. Abercrombie appeal was the standard for determining dilution, and more specifically, whether the California state law dilution standard of “identical or nearly identical” marks applied post-TDRA.  Because the TDRA does not specify the standard to use, the District Court applied the California state dilution law standard, ruling in favor of Abercrombie once it found that the marks were not identical or nearly identical.  The 9th Circuit overturned the District court, holding that the state law standard was more restrictive than the revised TDRA.  Further, because a broader reading of the Act may have resulted in a different outcome, the 9th Circuit remanded the case to the District Court so that it could apply the more liberal standard (and possibly arrive at a different outcome).

Don’t mess with Levi’s!  No, really.  Given how litigious they are, would you wanna fight them?  In court?  Of course it all depends on the facts (as always), but one of the first things I do when representing either side in a trademark dispute is to conduct factual investigation into the opposing party’s trademarks.  This includes registration & litigation history, use of the mark in the marketplace, & social media.  Evidence of aggressive enforcement and lots of litigation by an opponent certainly is a risk that clients’ need to understand and weigh.

About Lara

Lara Pearson is a trademark attorney with Exemplar, where she also serves as the firm's Sustainability Steward. Lara's legal practice focuses on trademark and copyright law, including: intellectual property audits; trademark search & clearance; trademark and copyright registration & maintenance; intellectual property transfers; transactional work; and dispute resolution, including litigation when necessary. Lara primarily represents other social enterprises -- those leveraging their businesses and brands as catalysts for positive social and environmental change. Such businesses engage in CSR (Corporate Social Responsibility) to have a positive "triple bottom line" of people, planet and profit. As Exemplar's Sustainability Steward, Lara works with others in her law firm to measure and reduce the firm's carbon emissions and encourage engagement in social responsibility initiatives, including pro bono legal work and volunteering. Lara is a proud member of the Social Venture Network. Brand Geek is a member of 1% for the Planet and a Certified B Corporation, whose Incline Village office is certified under the regional Keep the Sierra Green program. Exemplar Companies is the most innovative professional services firm in the New Economy. Our unique, diversified expertise spans the disciplines of corporate law, business advisory, and capital/investment banking to better meet the needs of our high-potential customers. We have assembled a comprehensive suite of service to meet the complex issues facing companies in today’s challenging business environment. Our unique, holistic approach ensures the growth and success – and greatly increases the competitive advantage - of our customers. The Exemplar team is comprised of knowledgeable, highly skilled experts in a wide range of industries and disciplines. They work closely with our customers to provide trusted advice, incomparable support, expert guidance and the ultimate competitive advantage as they accelerate their businesses and position themselves to transform industries.

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