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March 2011

Dueling Denim: Ninth Circuit Holds That Trademark Dilution-By-Blurring Does Not Require "Identical" or "Nearly Identical" Marks Under the Trademark Dilution Revision Act of 2006

No. 09-16322; 9th Cir. Cal. (February 8, 2011)

In Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., the Ninth Circuit Court of Appeals squarely addressed the issue of whether a claim for dilution-by-blurring under the Trademark Dilution Revision Act of 2006 ("TDRA") requires the junior mark to be "identical or nearly identical" to the senior famous mark.  The Court rejected the "identical or nearly identical" standard and held that the proper, less stringent standard for analyzing trademark dilution under the TDRA is whether the junior mark is "likely to impair the distinctiveness of the famous mark."  

The appeal involved back pocket stitching designs on jeans created and sold by plaintiff-appellant Levi Strauss & Company ("Levi Strauss") and defendant-appellee Abercrombie & Fitch Trading Company ("Abercrombie").  Levi Strauss holds a federally registered trademark known as the "Arcuate" mark, which consists of "two connecting arches that meet in the center" of the back pocket.  Under the TDRA, Levi Strauss sought an injunction prohibiting Abercrombie from using a stitching design on the pockets of its jeans that Levi Strauss claimed "incorporat[ed] the distinctive arcing elements" of the Arcuate mark.  Citing a more stringent standard for dilution claims, the district court found that Levi Strauss failed to establish that Abercrombie's design was "identical or nearly identical," a standard that requires that "the two marks be similar enough that a significant segment of the target group of customers . . . view the marks as essentially the same." 

In reviewing the district court's decision, the Ninth Circuit held that the district court applied the incorrect standard under the TDRA, pursuant to the statute's plain language.  Notably, the Court held that the "identical or nearly identical" standard originated in state dilution law and was adopted in cases interpreting the TDRA's predecessor statute, the Federal Trademark Dilution Act ("FTDA"), which was replaced by the TDRA largely in response to the United States Supreme Court's decision in Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003), that the FTDA required actual, rather than a mere likelihood, of dilution.

The Ninth Circuit noted that unlike the FTDA, the TDRA is an overhauled and more comprehensive statute embodying more than "surgical linguistic changes" to the FTDA and providing relief for "likely" dilution and for dilution "by blurring" or by "tarnishment."  Specifically, the TDRA provides in relevant part:

Subject to the principles of equity, the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the owner's mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.

'[D]ilution by blurring' is association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.  In determining whether a mark or trade name is likely to cause dilution by blurring, the court may consider all relevant factors, including the following:

(i) The degree of similarity between the mark or trade name and the famous mark.
(ii) The degree of inherent or acquired distinctiveness of the famous mark.
(iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark. 
(iv) The degree of recognition of the famous mark.
(v) Whether the user of the mark or trade name intended to create an association with the famous mark.
(vi) Any actual association between the mark or trade name and the famous mark.

15 U.S.C. § 1125(c)(1), (c)(2)(B) (emphasis added). 

Parsing the language of the TDRA, the Court noted the absence of standards, such as "identical," "nearly identical," or "substantially similar," commonly used by the circuit courts.  Instead, the Court stated, the TDRA uses terms such as "similarity" and "degree of similarity," which show that the TDRA uses a less demanding standard for dilution than what was used under the FTDA.  Further, the Court noted that the analysis of the "degree of similarity" as but a single factor shows that similarity between the marks, while relevant, is not the controlling criterion in a dilution claim. 

Having determined that the incorrect "identical or nearly identical" standard permeated the district court's decision in denying Levi Strauss's injunction, the Court reversed and remanded the case.

Intellectual Property

Susan B. Meyer
Hazel Mae B. Pangan

Intellectual Property