Aggressive Jeans

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.

[pdf http://www.ca9.uscourts.gov/datastore/opinions/2011/02/08/09-16322.pdf ]

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.