In the News

Blurred vision: Trademark Dilution Standard

clarified

The owners of famous trademarks often face a con- stant onslaught of parties using marks similar to their famous marks. In its ruling in Levi Strauss v. Abercrombie & Fitch, the U.S. Court of Appeals for the Ninth Circuit came to the rescue of such owners by making it easier for them to pursue cases of trade- mark dilution by blurring.

In the jeans

Since 1873, Levi Strauss has stitched the back pockets 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. Abercrombie & Fitch began using its “Ruehl” stitch- ing design in 2006. The design consists of two less- pronounced arches that are connected by a “dipsy doodle,” which resembles the mathematical sign for infinity.

Blurring occurs when the association arising from the similarity between a famous mark and another mark impairs the distinctiveness of the famous mark.

In 2007, Levi Strauss sued Abercrombie for, among other things, trademark dilution by blurring, seek- ing injunctive relief. Blurring occurs when the asso- ciation arising from the similarity between a famous for mark and another mark impairs the distinctiveness of the famous mark. The district court ruled for Abercrombie, finding that the Ruehl design isn’t “identical or nearly identical” to the Arcuate mark. Levi Strauss appealed.

Legal stitches in time

On appeal, Levi Strauss contended that the district court had erred in requiring the company to establish that its mark was identical or nearly identical to the Ruehl design. The Ninth Circuit began its analysis by noting that the “identical or nearly identical” requirement of identity, or substantial similarity, predates the adoption of the Trademark Dilution Revision Act (TDRA) in 2006.

In the 2002 case of Thane International, Inc. v. Trek Bicycle Corp., the Ninth Circuit tied the requirement for identity or near identity to the language of the then-governing Federal Trademark Dilution Act (FTDA) and to tests that it had developed in inter- preting FTDA. But here the court pointed out that, under TDRA, Congress “created a new, more compre- hensive federal dilution act,” one that includes no references to the standards commonly employed by the courts of appeals in the past — including “iden- tical,” “nearly identical” or “substantially similar.” In fact, TDRA provides a nonexhaustive list of rel- evant factors for determining whether dilution by blurring has occurred. These factors include:

-The degree of similarity between the mark or trade name and the famous mark (in this case, the Arcuate mark),

- The degree of inherent or acquired distinctiveness of the famous mark,

- The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark,

- The degree of recognition of the famous mark,

-Whether the user of the mark or trade name intended to create an association with the famous mark, and

- Any actual association between the mark or trade name and the famous mark.

The Ninth Circuit concluded that the inclusion of “degree of similarity” in the factors indicates that it’s only one consideration in a multifactor list — and not necessarily the controlling factor.

Court opts for relaxed fit

The court ultimately held that, to obtain injunctive relief, TDRA doesn’t require a plaintiff to establish that the mark is identical, nearly identical or sub- stantially similar to the famous mark. Rather, the plaintiff must show, based on all of the relevant fac- tors, that the mark is likely to impair the distinctive- ness of the famous mark.