February 28, 2011
Intellectual Property Alerts

Ninth Circuit Addresses Trademark Dilution Claims Under TDRA
by Cyrus Wadia

In February, the Ninth Circuit revived Levi Strauss's previously dismissed claim against Abercrombie & Fitch Trading Co. for trademark dilution-by-blurring of its iconic double arch "Arcuate" pocket design.  Judge Kenneth Ripple held that a California district court erroneously applied a defunct "identical or nearly identical" dilution standard as grounds for the dismissal.  Levi Strauss & Company v. Abercrombie & Fitch Trading Company, __ F.3d __ (9th Cir. February 8, 2011).
Levi's is no stranger to trademark litigation:  it actively enforces exclusive rights to its Arcuate design.  Here, Levi's sought injunctive relief against Abercrombie's own "Ruehl" pocket design pursuant to the Trademark Dilution Revision Act of 2006 (TRDA).   Levi's argued that the Ruehl Design – which consists of two less-pronounced arches connected by a "dipsy doodle" resembling the mathematical sign for infinity – diluted the distinctiveness and value of its senior mark. 

  Levi's Arcuate Design                                 Abercrombie's Ruehl Design

The District Court ruled against Levi's, finding that the marks failed to pass a strict "identical or nearly identical" standard for similarity in dilution cases. Levi's appealled, arguing that the District Court's dilution standard of "identical or nearly identical" was not applicable, and that the degree of similarity between the marks is just one of several factors that a district court had to balance in order to determine whether dilution occurred and therefore whether a plaintiff is entitled to injunctive relief.
The issue before the Ninth Circuit was the present-day authority of the identical or nearly identical caselaw standard, which traces its genealogy to New York state dilution law and Federal Trademark Dilution Act of 1995.  The Ninth Circuit found that the standard no longer remains viable after the enactment of the TDRA.  It found that the TDRA relies on the less demanding "similarity" requirement, "suggest[ing] that Congress did not wish to be tied to the language or interpretation of prior law, but instead crafted a new approach to… consideration of dilution-by-blurring claims."  The Nintch Circuit thus remanded the case back to District Court for further proceedings.

 ***Mr. Wadia recognizes Jong Cho's assistance in the preparation of this legal news alert.

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