The Battle Between Jean Back Pocket Designs Highlights Trademark Dilution Concerns

Jeans are big business with people wanting to be seen in the latest trends and willing to shell out hundreds of dollars to look good in a pair. So it comes as no surprise that the Levi Strauss v. Abercrombie & Fitch back pocket design lawsuit is going through so many twists and turns.

In February, the Ninth Circuit Court of Appeals denied the U.S. District Court for the Northern District of California’s analysis of the Trademark Dilution Revision Act (“TDRA”), thus allowing Levi Strauss another chance to debate its claims that Abercrombie is trying to mimic Levi’s famous arch design on the jean back pocket.

The Ninth Circuit asserts that the Trademark Dilution Revision Act does not only mandate that a design must be “identical or nearly identical”, but for a dilution claim to be valid, the plaintiff must show six factors, including the prevalence of similarity and that a junior mark is “likely to impair the distinctiveness of the famous mark.” Soon enough, the District Court will be hearing the case again since the Ninth Circuit deemed Levi’s has enough of a claim.

Levi’s has been selling blue jeans since the 1870s and its trademarked “Arcuate” back pocket design with two connecting arches has always been a strong visual identifier for the brand and its wearers. Jeans with this back pocket design equal an estimated 95 percent of Levi’s sales and in the last 30 years raked in $50 billion in revenue. In 2006, Abercrombie began using a “Ruehl” design with two less-pronounced arches that Levi feels dilutes their stitching mark.

Apparel companies and businesses in general spend tons of money and lots of creative effort to have their brands stand out from the competition. The lawsuit brings up questions of how the courts will rule for similar design and logo concepts. In this instance, will the courts allow all jean companies to use arches, therefore diluting this identifier in infinite ways? Some say it is akin to letting other computer companies use the sign of the bitten apple, diminishing the power of a visual cue that a company has cultivated for its own benefit in the public’s consciousness.

The TDRA requires that a company alleging dilution by blurring of the designs show an overwhelming degree of dilution. The ruling can compensate for likely, not necessarily actual, dilution and separately, injunctive relief.

The six factors include the:

degree of similarity between the mark or trade name in question and the famous mark

– degree of inherent or acquired distinctiveness of the famous mark

– extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark

– degree of recognition of the famous mark

– whether the user of the mark or trade name in question intended to create an association with the famous mark

– any actual association between the mark or trade name in question and the famous mark

The Ninth Circuit court drew a line in the sand to follow the rationale of the TDRA and not any pre-TDRA rulings that required marks to be substantially similar to seek dilution decisions.

“The degree of similarity between the Ruehl and Arcuate marks may be insufficient to support a likelihood of dilution, but that conclusion can come only after consideration of the degree of similarity in light of all other relevant factors and cannot be determined conclusively by application of an ‘essentially the same’ threshold,” said Kenneth F. Ripple, Senior Ninth Circuit Court Judge.

In California, Los Angeles intellectual property attorney Anthony Spotora is paying close attention to how the case will be decided. This case as well as other business needs show that legal counsel is crucial early on for a brand. From trademarks, copyrights, product launches, and contractual agreements, an experienced attorney can help protect a company’s rights from the start-up stages to ensuring its assets are safeguarded each and every day.

The Law Offices of Spotora & Associates defends clients’ intellectual property rights throughout California, the U.S., and abroad. They are known for their senior-level counsel and personalized attention to give each client exceptional results.

Anthony Spotora is a Los Angeles entertainment lawyer and Los Angeles business attorney. To learn more, visit Spotoralaw.com.

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