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March 1, 2011 Vol. 66 No. 5 Back to Bulletin Main Page

U.S. Ninth Circuit Court Agrees With INTA and Rejects “Nearly Identical Mark” Requirement Under TDRA


Referencing INTA’s amicus brief filed in the case, the Ninth Circuit in Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., No. 09-16322 (9th Cir. Feb. 8, 2011) held that the Trademark Dilution Revision Act (TDRA) does not require the accused mark to be “identical or nearly identical” to the plaintiff’s mark for a finding of likelihood of dilution. INTA’s brief did not take a position on the merits but advocated the statutory approach INTA espoused in earlier cases such as Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97 (2d Cir. 2009).

In Levi Strauss, INTA’s  amicus brief traced the origins of the “identical or nearly identical” standard to New York statutory law enacted in the 1950s—decades prior to enactment of the Federal Trademark Dilution Act in 1996 (later repealed and replaced by the TDRA in 2006). In Levi Strauss the Ninth Circuit held that the standard did not survive enactment of the TDRA. In this way, the court prevented a threshold “identicality” requirement from swallowing the TDRA’s multifactor approach for assessing blurring claims.

Noting the six factors to be considered in claims of dilution by blurring, the court held that the “degree of similarity” between the marks is to be taken into account, but, as the statutory language suggested, “not…to be the necessarily controlling factor.” The court therefore reversed and remanded the district court’s judgment that Abercrombie did not dilute the Levi Strauss “Arcuate” stitching design appearing on its garments, and remanded the case. The jury had determined that the Arcuate trademark was famous and distinctive, but that the “Ruehl” stitching design used by Abercrombie on the back pocket of its blue jeans was not “identical or nearly identical” to the Arcuate design.

Essential to the court’s analysis was a careful exploration of several earlier Ninth Circuit cases that had established or applied the “identical or nearly identical” requirement: Playboy Enterprises, Inc. v. Welles, 279 F.3d 796 (9th Cir. 2002) (which established the requirement, having adopted the Eighth Circuit’s holding in Luigino’s, Inc. v. Stouffer Corp., 170 F.3d 827, 832 (8th Cir. 1999)); Thane International, Inc. v. Trek Bicycle Corp., 305 F.3d 894 (9th Cir. 2002); Perfumebay.com Inc. v. eBay, Inc., 506 F.3d 1165 (9th Cir. 2007); Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628 (9th Cir. 2008); and Visa International Service Association v. JSL Corp., No. 08-15206 (9th Cir. June 28, 2010). The Ninth Circuit distinguished those cases in great detail. Moreover, the court noted that the Second Circuit in Starbucks had correctly observed that the Ninth Circuit had not resolved whether the “essentially the same” standard applied in Perfumebay.com applies to TDRA federal dilution claims.

District courts within the Ninth Circuit (and likely other courts as well) will benefit from the clarity the Levi Strauss decision provides. Now that the Second Circuit and Ninth Circuit have spoken with one voice on the issue, the chances of a consistent application of the TDRA blurring standard across all circuits will be greatly increased. Likewise, famous brand owners stand to gain from this decision, because third parties seeking to use variations of famous marks cannot insulate themselves from liability merely by adopting a mark that is not identical or nearly so.

INTA thanks David Bernstein (Debevoise & Plimpton LLP, USA), Scot Duvall (Middleton Reutlinger, USA), Lawrence Nodine (Ballard Spahr, USA) and the other members of the U.S. Subcommittee of the International Amicus Committee for drafting INTA’s Amicus Brief in November 2009.


Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2011 International Trademark Association