Aligning itself with the Second Circuit, the U.S. Court of Appeals for the Ninth Circuit held that a trademark owner need not establish that an infringer’s mark is “identical or nearly identical” to its famous mark in order to prevail on a claim of trademark dilution by blurring under the federal Trademark Dilution Revision Act (TDRA). Levi Strauss v. Abercrombie & Fitch, Case No. 09-16322 (9th Cir., Feb. 8, 2011) (Ripple, J.)

Levi Strauss sells blue jeans that incorporate a stitching pattern on the back pocket, consisting of two connecting arches. Levi Strauss obtained U.S. trademark registrations for this “arcuate” stitching pattern. Abercrombie began using a stitching design on the back pocket of its jeans featuring two arches connected by a loop in 2006. In 2007, Levi Strauss brought an action against Abercrombie for trademark infringement, unfair competition and trademark dilution under both federal and California law. Levi Strauss alleged that Abercrombie’s “Ruehl” mark was likely to cause dilution of Levi’s Arcuate mark by blurring—by causing an association between the two marks that impairs the distinctiveness of Levi’s mark.

Ultimately, the district court held that Abercrombie’s Ruehl design did not dilute Levi’s arcuate design because Levi Strauss did not show that Abercrombie’s Ruehl mark was “identical or nearly identical” to Levi’s arcuate mark. To meet that standard, a significant segment of the target audience must see the two marks as “essentially the same.” The district court noted that the test of similarity in the context of a dilution claim is “more stringent than in the infringement context.”

Levi’s federal trademark dilution claim is governed by the TDRA, which was enacted in 2006. Congress enacted the TDRA in response to the 2003 Supreme Court decision in Mosely holding that a trademark owner must show actual dilution to prevail on a federal trademark dilution claim. The TDRA permits an owner of a famous mark to obtain injunctive relief against one who commences use of a mark that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark. Courts assess blurring claims under a list of factors in the TDRA. Under the previous version of the federal trademark dilution statute, a trademark owner was required to show that a defendant’s mark was “identical or nearly identical” to prevail.

Levi Strauss appealed, arguing that the district court incorrectly applied the “identical or nearly identical” standard because the standard no longer applies under the TDRA. The 9th Circuit agreed. The court pointed to several aspects of the TDRA to explain why the “identical or nearly identical” standard no longer applies to federal dilution claims. First, the statute makes no reference to an identity requirement, i.e. “identical,” “nearly identical” or “substantially similar.” Second, the TDRA provides relief against use of “a” junior mark likely to cause dilution—not “the” mark—thus the statue contemplates that any number of unspecified (non-identical), junior marks may be likely to dilute the senior mark. Third, the court noted that the TDRA lists degree of similarity between the marks among the factors to consider when assessing a blurring claim, indicating that Congress did not intend for similarity between the parties’ marks to be the controlling factor. In its holding, the court noted that the U.S. Court of Appeals for the Second Circuit has also determined that the standard did not survive the enactment of the TDRA.

The court did not determine whether the degree of similarity between the parties’ marks was sufficient to establish a likelihood of dilution. Rather, the Court remanded Levi’s federal dilution claim to the district court with instructions to evaluate likelihood of dilution by an analysis of all of the statutory factors, e.g., the degree of inherent or acquired distinctiveness of plaintiff’s mark, plaintiff’s exclusivity of use, the degree of recognition of plaintiff’s mark, defendant’s intent and proof of any actual association between the plaintiff’s and defendant’s mark.

Practice Note: This decision and a similar 2009 2nd Circuit decision, Starbucks v. Charbucks, (seeIP Update, Vol. 12, No. 12) provide owners of famous trademarks greater confidence in bringing enforcement actions to protect their marks because the decisions confirm that the TDRA provides relief not only against use of marks that are identical or nearly identical to a famous mark, but against all junior marks likely to impair the distinctiveness of the famous mark.