Court Drops "Identical or Nearly Identical" Standard for Dilution by Blurring Claims

Since 1873, Levi Strauss has sold roughly $50 billion of jeans featuring its stitched "arcuate" double-arch back pocket design and it owns a federally registered trademark for its design. In 2006, Abercrombie & Fitch began selling jeans using a stitched "Ruehl" design on their back pockets that, according to Levi Strauss, "incorporates the distinctive arcing elements of" the Levi Strauss trademark. (The two companies' designs are depicted below.)  The following year, Levi Strauss brought suit against Abercrombie that included several causes of action, including one for federal trademark dilution.

Levi Strauss's "Arcuate" design 



Abercrombie's "Ruehl" design



  

 



Trademark law is concerned with the identification of the source of goods and services. Trademark dilution is a concept that permits the owner of a famous trademark to prohibit others from using marks in a manner that may lessen the mark's uniqueness. Dilution is generally divided among dilution by "blurring" and dilution by "tarnishment." Blurring can occur when a famous or distinctive mark that has been associated with a particular type of goods and services is used to identify the source of goods or services in other markets (e.g., McDonalds' handbags). Tarnishment (which was not at issue in the Levi Strauss case) is considered the weakening of a mark through unsavory or unflattering associations by another.

At trial in the Levi Strauss case, as part of the dilution by blurring claim, the jury was asked to decide whether the Levi Strauss mark was famous and distinctive, and if so, whether the Abercrombie design was "identical or nearly identical to" it. The jury determined that the Levi Strauss mark was famous and distinctive, but that the Abercrombie design was not "identical or nearly identical." The district court entered judgment in favor of Abercrombie on the dilution claim.  Levi Strauss appealed the case to the Ninth Circuit Court of Appeals.

Beginning in 2002, courts employing Ninth Circuit case law had employed an "identical or nearly identical" standard in evaluating claims for trademark dilution. The standard was developed in light of the Federal Trademark Dilution Act ("FTDA") then in force and the case law interpreting it. However, in 2006, Congress enacted a new, comprehensive federal dilution act called the Federal Trademark Dilution Revision Act of 2006 ("TDRA"). The TDRA defined "dilution by blurring" to mean the "association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark." 15 USC § 1125(c)(2)(B).

Cases interpreting the new legislation since its enactment had not previously addressed squarely whether the "identical or nearly identical" standard had survived. In Levi Strauss, the Ninth Circuit determined that it had not.  The new act did not incorporate the "identical", "nearly identical", or even the "substantially similar" language that some courts had been applying, and the Ninth Circuit found that the text of the new act articulated a different dilution standard than courts had been employing under the old FTDA.  In short, it ruled, the old "identical or nearly identical" standard no longer applies in dilution by blurring cases.  The Ninth Circuit reversed and remanded the case to the trial court for further proceedings.

The 9th Circuit's opinion in Levi Strauss & Co. v. Abercrombie & Fitch Trading Co, 9th Cir. Case No. 09-16322 (2011) is available here.