It was error for a district court to apply an "identical or nearly identical" standard to a claim by apparel maker Levi Strauss & Co. (Levi) that competitor Abercrombie & Fitch (Abercrombie) diluted Levi's registered trademark consisting of a stitched design on the back pocket of its blue jeans, the U.S. Court of Appeals in San Francisco has held.

Pocket Stitching Marks

Levi's mark --known as the "Arcuate" design --consisted of two connecting arches that met in the center of the pocket. Abercrombie used a stitching design on the back pockets of its jeans that, according to Levi, incorporated the distinctive arcing elements of the Arcuate mark. Abercrombie's "Ruehl" design consisted of two less-pronounced arches that were connected by a "dipsy doodle" that resembled the mathematical sign for infinity.

Degree of Similarity

Levi was not required to establish that the Arcuate design was identical or nearly identical to the Ruehl design, the court said. Prior to the enactment of the Trademark Dilution Revision Act of 2006 (TDRA), courts had interpreted federal dilution law as requiring a showing that the junior mark was identical or nearly identical to the senior mark, in order to support a claim for "blurring."

The requirement that a plaintiff establish that the marks were "substantially similar" or "identical or nearly identical" as a threshold showing for relief under Sec. 43(c) of the Lanham Act did not survive passage of the TDRA, according to the court.

The TDRA explicitly included the degree of similarity between the parties' marks as one factor among many in the dilution analysis. In adopting the TDRA, Congress rewrote Sec. 43(c), suggesting that Congress did not wish to be tied to the language or interpretation of prior law, according to the court.

The current law defined dilution by blurring as an association arising from the similarity between a mark and a famous mark that impaired the distinctiveness of the famous mark. Although "similarity" was a factor in the analysis, the statute did not use words like "very" or "substantial" in connection with the similarity factor, the court noted.

Error Not Harmless

The district court's error was not harmless, in the appellate court's view. The incorrect standard permeated the district court's analysis and played a pivotal role in the court's determination that the Ruehl design was not likely to dilute the Arcuate mark. According to the district court, degree of similarity was one of only three factors that weighed in the competitor's favor; the factors of acquired distinctiveness and degree of recognition weighed in the apparel maker's favor. Thus, application of the correct, less-demanding standard could have tipped the balance in favor of the apparel maker.

The district court's decision was reversed and the case was remanded for further proceedings.

Levi Strauss & Co., 9th Cir., ¶61,760.