On February 8, 2011, the US Court of Appeals for the Ninth Circuit ruled in Levi Strauss v. Abercrombie & Fitch that a trademark owner need not demonstrate that a defendant’s mark is “identical or nearly identical” to the owner’s mark in order to prove a claim of trademark dilution by blurring under federal law.

The case involves the famous Levi Strauss “Arcuate” design mark, which consists of two double arches meeting at a downward point on the back pockets of Levi’s jeans. Abercrombie & Fitch uses an allegedly similar “Ruehl” design mark that consists of two downward arches that meet in a symbol similar to the “mathematical sign for infinity.” Levi’s claims that Abercrombie’s use of the Ruehl mark is likely to cause dilution by blurring of its Arcuate mark – that is, likely to cause an association between the two marks that impairs the distinctiveness of the famous mark – in violation of the Trademark Dilution Revision Act of 2006 (TDRA), 15 U.S.C. § 1125(c). The TDRA directs courts to consider a non-exhaustive list of factors in determining whether dilution is likely to occur. However, the district court held that, under Ninth Circuit law, the dilution claim cannot prevail because the alleged infringing mark was not “identical or nearly identical” to Levi’s mark.

The Ninth Circuit disagreed. Distinguishing language in several of its prior decisions on which the district court had relied, the appellate court held that the “identical or nearly identical” standard cannot be squared with the plain language of the TDRA. Instead, the court clarified that, while similarity of the marks has a “special role” to play in the multi-factor dilution test, the plain language of the statute “does not require that a plaintiff establish that the junior mark is identical, nearly identical, or [even] substantially similar to the senior mark in order to obtain injunctive relief.” The Ninth Circuit remanded the Levi’s case to the district court for further proceedings.

This decision brings Ninth Circuit law on the issue into harmony with Second Circuit law, as the latter court held the same thing in the Starbucks v. Charbucks case. Together, the rulings are extremely helpful for owners of famous marks because – at least in two of the most influential courts with respect to trademark law – they face a significantly lower standard of proof on dilution claims.

Arent Fox has extensive experience advising clients with respect to, and litigating, claims involving famous trademarks. If you have any questions about this case or other trademark dilution issues, please contact Alec P. Rosenberg or Eva J. Pulliam.

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