Ninth Circuit Rejects "Identical or Nearly Identical" Standard for Dilution Claims Under the TDRA
Levi Strauss sued Abercrombie & Fitch in 2007 claiming, in relevant part, that Abercrombie's stitching design used on the back pockets of its jeans diluted Levi's registered stitching design also used on the back pockets of its jeans.
The District Court entered judgment in favor of Abercrombie on Levi's claim for dilution under the Trademark Dilution Revision Act of 2006 ("TDRA"), concluding that Levi had not established that Abercrombie was using a mark "identical or nearly identical" to Levi's stitching design mark (pictures of the two designs are attached to the Ninth Circuit's opinion). The question on appeal was whether this "identical or nearly identical" standard survived the enactment of the TDRA, which replaced the Federal Trademark Dilution Act ("FTDA").
The Ninth Circuit first traced the origins of the "identical or nearly identical" standard back to New York state dilution law, which pre-dated the adoption of the FTDA in 1996. The court then examined Ninth Circuit case law applying the standard, which tied it to the language, legislative history and purpose of the FTDA.
The Ninth Circuit then described the passage of the TDRA and ultimately concluded that, for a variety of reasons, the "identical or nearly identical" standard did not survive the enactment of the statute. In particular, the court noted that "[s]everal aspects of the TDRA are worth noting":
The first . . . is that Congress did not merely make surgical linguistic changes to the FTDA in response to Moseley. Instead, Congress created a new, more comprehensive federal dilution act. Furthermore, any reference to the standards commonly employed by the courts of appeals--"identical," "nearly identical," or "substantially similar"--are absent from the statute. The TDRA defines "dilution by blurring" as the "association arising from the similarity between a mark or a trade name and a famous mark that impairs the distinctiveness of the famous mark." . . . Moreover, in the non-exhaustive list of dilution factors that Congress set forth, the first is "[t]he degree of similarity between the mark or trade name and the famous mark." . . . Thus, the text of the TDRA articulates a different standard for dilution from that which we utilized under the FTDA.
In looking further at the statutory language of the TDRA, the Ninth Circuit concluded that it did "not require that a plaintiff establish that the junior mark is identical, nearly identical or substantially similar to the senior mark in order to obtain injunctive relief." Instead, a plaintiff must show that the junior mark "is likely to impair the distinctiveness of the famous mark" based on the factors set forth in the TDRA, which include the degree of similarity of the marks.
The court also rejected Abercrombie's argument that post-TDRA Ninth Circuit cases demonstrated that the "identical or nearly identical" standard survived passage of the TDRA, concluding that the issue was not "presented or squarely resolved" in any of the three cases (Visa Int'l Serv. Ass'n v. JSL Corp., No. 08-15206, 2010 WL 2559003 (9th Cir. June 28, 2010); Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628 (9th Cir. 2008); Perfumebay.com Inc. v. eBay, Inc., 506 F.3d 1165 (9th Cir. 2007)).
Finally, the Ninth Circuit held that it could not conclude that the District Court's legal error in employing the "identical or nearly identical" standard was harmless as the use of the standard "permeated the court's analysis and provided the basis upon which the court evaluated the evidence." The Ninth Circuit thus reversed the District Court's judgment in favor of Abercrombie on Levi's claim under the TDRA.
The case cite is Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., No. 09-16322 (9th Cir. Feb. 8, 2011).
