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Ninth Circuit: Congress Expanded Definition of Dilution When It Adopted TDRA

BY Gregory S. Gilchrist
March 29, 2011

In Levi Strauss & Co. v. Abercrombie & Fitch Co., Ninth Circuit Case No. 09-16322 (9th Cir. Feb. 8, 2011) (cited as “Slip Op.”), the Ninth Circuit Court of Appeals recently confirmed that Congress expanded the definition of dilution when it adopted the Trademark Dilution Revision Act of 2006 (“TDRA”). The court acknowledged that restrictive rules developed under the predecessor statute, the Federal Trademark Dilution Act (“FTDA”), only protected against dilution caused by “identical or nearly identical” marks. But it ruled that new provisions of the TDRA eliminated this “identicality” requirement and expanded protection for famous trademarks. The new standard requires that district courts consider the marks' “degree of similarity,” along with other factors, in order to determine whether dilution is likely.

Background of the Litigation

Levi Strauss has used a pocket stitching design to mark its blue jeans since 1873. At trial, Levi Strauss proved that its pocket stitching ' called its “Arcuate” trademark ' is likely the oldest apparel trademark in the United States, older than the LEVI's' mark itself. Levi Strauss has used the Arcuate trademark on products generating approximately $50 billion in sales over the past 30 years. On the strength of this showing, an advisory jury held that the Arcuate trademark was famous and, therefore, eligible for protection against dilution. The Arcuate trademark is reproduced in Design 1, below.

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