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Intellectual Property

Dilution by blurring clarified; Ninth Circuit rejects identical or nearly identical standard in light of the Trademark Dilution Revision Act

Since 1873, Levi Strauss has stitched the back pocket of its jeans with two connecting arches that meet in the center of the pocket.  Levi Strauss holds a federally registered trademark on this "Arcuate" design. In 2006, Abercrombie & Fitch began using a stitching design on the back pockets of its jeans that, according to Levi Strauss, incorporated the distinctive arcing elements of the Arcuate trademark. Abercrombie's "Ruehl" design, which sat lower on the pocket than Levi Strauss's design, consisted of two less-pronounced arches that were connected by a "dipsy doodle," which resembled the mathematical sign for infinity.

In Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 2009 U.S. Dist. LEXIS 33923 (N.D. Cal. Apr. 22, 2009) [enhanced version available to subscribers], Levi Strauss sought injunctive relief, accusing Abercrombie of dilution by blurring in violation of the Trademark Dilution Revision Act of 2006 (TDRA), 15 U.S.C.S. § 1125(c). In evaluating the dilution claim, the district court required Levi Strauss to establish that its mark was identical or nearly identical to the Ruehl design. Following an unfavorable judgment, Levi Strauss appealed.

Levi Strauss maintained that the district court applied an incorrect legal standard in evaluating its dilution claim, namely that the junior mark be "identical or nearly identical" to the senior one. Conversely, Abercrombie argued that despite the absence of any reference in the TDRA to the "identical or nearly identical standard," this standard nonetheless survived the passage of the TDRA.

In Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 2011 U.S. App. LEXIS 2361 (9th Cir. Cal. Feb. 8, 2011) [enhanced version / unenhanced version available from lexisONE Free Case Law], the Ninth Circuit addressed whether, to establish dilution by blurring under the TDRA, the junior mark had to be "identical or nearly identical" to the senior mark. In reversing, the court agreed with Levi Strauss that the "identical or nearly identical" standard had not survived Congress's enactment of the TDRA. The court specifically held that:

Thus, the plain language of 15 U.S.C. § 1125(c) does not require that a plaintiff establish that the junior mark is identical, nearly identical or substantially similar to the senior mark in order to obtain injunctive relief. Rather, a plaintiff must show, based on the factors set forth in § 1125(c)(2)(B), including the degree of similarity, that a junior mark is likely to impair the distinctiveness of the famous mark.

( customers can access the treatise below directly)

2-5A Gilson on Trademarks § 5A.01 Federal Dilution Law (Purchase this treatise at the LexisNexis Store)


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