U.S. COURT OF APPEALS FOR THE NINTH CIRCUIT, DECISION OF 8 FEBRUARY 2011, 09-16322, LEVI STRAUSS & COMPANY V. ABERCROMBIE & FITCH TRADING CO.

The Court of Appeals for the Ninth Circuit is the second federal appellate court in the United States to rule that the Trademark Dilution Revision Act (TDRA) does not require the accused mark be "identical or nearly identical" to the plaintiff’s mark. The ruling follows the landmark decision by the Court of Appeals for the Second Circuit in Starbucks Corp. v. Wolfe’s Borough Coffee, Inc.,1 holding that the TDRA does not require proof of "substantial similarity" between the marks in order to establish dilution by blurring.

In 2007, Levi Strauss & Co. (Levi Strauss) sued Abercrombie & Fitch Trading Co. (Abercrombie) for trademark dilution of the "Arcuate" design mark, which has appeared on the back pocket of Levi Strauss’ jeans since 1873, based on Abercrombie’s use of the "Ruehl" design which commenced in 2006.

Please click here to view Levi Strauss’ "Arcuate" design and Abercrombie’s "Ruehl" design

Following trial, the district court ruled in favor of Abercrombie and noted that although the jury found that the "Arcuate" design mark was famous and distinctive, Levi Strauss had not established that its "Arcuate" design mark was identical or nearly identical to the "Ruehl" design. On appeal, Levi Strauss argued that the district court erred in requiring the marks be identical or nearly identical as that language appears nowhere in the TDRA and the degree of similarity of the marks is but one of the following six non-exhaustive factors relevant to whether a likelihood of dilution exists:

  1. The degree of similarity between the mark or trade name and the famous mark.
  2. The degree of inherent or acquired distinctiveness of the famous mark.
  3. The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark.
  4. The degree of recognition of the famous mark.
  5. Whether the user of the mark or trade name intended to create an association with the famous mark.
  6. Any actual association between the mark or trade name and the famous mark.

Abercrombie fought back by arguing that the Ninth Circuit had already determined in three prior post-TDRA decisions that a junior mark must be identical or nearly identical to that of a senior user in order for a plaintiff to be entitled to relief under the TDRA2.

After carefully discussing the origin of the identical or nearly identical standard under the Federal Trademark Dilution Act (the predecessor of the TDRA) and California state law and distinguishing the three post-TDRA Ninth Circuit decisions relied upon by Abercrombie, the court reversed the district court judgment and remanded the case to the lower court.

The decision, along with the Second Circuit’s decision in Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., signals that U.S. federal courts may be moving towards a uniform application of the TDRA.