Levi Strauss & Co.v.Abercrombie & Fitch Trading Co.

Trademark Trial and Appeal Board

Mar 29, 2012

No. 91175601 (T.T.A.B. Mar. 29, 2012)

jk Mailed: March 29, 2012

Opposition No. 91175601
Cancellation No. 92049913

Levi Strauss & Co.

v.

Abercrombie & Fitch Trading
Co.

Before Grendel, Bergsman and Shaw,
Administrative Trademark Judges.

By the Board:
As a preliminary matter, inasmuch as Opposition No.
91175601 and Cancellation No. 92049913 involve the same parties
the same marks, and similar claims, and inasmuch as
applicant/respondent Abercrombie & Fitch Trading Co. (“A&F”)
filed a motion for summary judgment in both proceedings which
seeks judgment on the same claims and is based on the same
civil action (discussed further below) and underlying
circumstances, this order sets forth the Board’s decision on
the merits of A&F’s motion with respect to both proceedings.
A&F’s application and the parties’ registrations
A&F filed an application to register the design mark shown
below for “clothing, namely, jeans, skirts, shorts, pants and
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
Opposition No. 91175601; Cancellation No. 92049913

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jackets.”1 After a division of the application pursuant to
Trademark Rule 2.87, A&F’s parent application, for “clothing,
namely, jackets,” in International Class 25, was published for
opposition, and a Supplemental Register registration issued for
the goods in the child application, namely, “clothing, namely,
jeans, skirts, shorts, pants,” in International Class 25.2

Both the application and registration include the following
description of the mark statement:
The mark consists of a miscellaneous mirror
image stitching design. The dotted lines around
the mark represents the shapes of the pockets,
which are not claimed as features of the mark.

Levi Straus & Co. (“LS&Co.”) opposes registration of the
application, and filed a petition to cancel the registration.
In each complaint, LS&Co. asserts the grounds of 1) priority
and likelihood of confusion under Trademark Act § 2(d); and 2)
dilution under Trademark Act § 43(c).3 In both proceedings,

1 Application Serial No. 78766368 filed December 5, 2005,
asserting a bona fide intent to use the mark in commerce pursuant
to Trademark Act § 1(b).
2 Supplemental Register Registration No. 3451669, registered June
17, 2008.
3 In neither the notice of opposition, nor the petition to
cancel, does LS&Co. allege that its marks became famous prior to
the filing date of A&F’s application, or prior to A&F’s first use
of its mark, as required in setting forth a dilution claim. See
Toro Co. v. ToroHead Inc., 61 USPQ2d 1164, 1172-1173 (TTAB 2001);
Opposition No. 91175601; Cancellation No. 92049913

3

LS&Co. pled ownership of the following four Principal Register
registrations in International Class 25, each for a mark which
LS&Co. identifies as its “Arcuate Stitching Design Trademark”
or “Arcuate Mark”:
1) Registration No. 404248 for “waistband type overalls,” for
the mark:4

2) Registration No. 1139254 for “pants, jackets, skirts and
shorts,” for the mark:5

3) Registration No. 2791156 for “pants, jeans, shorts, skirts
and jackets,” for the mark:6

Polaris Industries Inc. v. DC Comics, 59 USPQ2d 1798 (TTAB 2000).
Here, A&F did not raise the issue of the sufficiency of the
pleading of the dilution claim. Thus, by way of the parties’
briefing on the merits of the motion for summary judgment which
we consider herein, we construe the complaints to include a
properly pleaded dilution claim. See Fed. R. Civ. P. 15(b)(2).
In Cancellation No. 92049913, LS&Co. also listed the grounds of
deceptiveness and false suggestion of a connection under
Trademark Act § 2(a) on the ESTTA system filing cover sheet to
its petition to cancel; however, these grounds are not
sufficiently pled in the complaint.
4 Registered November 16, 1943; third renewal December 28, 2004.
Opposition No. 91175601; Cancellation No. 92049913

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4) Registration No. 2794649 for “pants, jeans, shorts, skirts
and jackets,” for the mark:7

A&F denied the salient allegations in the notice of
opposition in its answer thereto, after which LS&Co. moved to
suspend the proceeding pending disposition of a civil action.
In Cancellation No. 92049913, prior to the time to answer, A&F
moved to suspend the proceeding pending the disposition of the
civil action. Thereafter, both proceedings were suspended
under Trademark Rule 2.117(a) pending disposition of the civil
action.
The federal civil action
In Levi Strauss & Co. v. Abercrombie & Fitch Trading Co.,
Case No. 3:07-cv-03752-JSW, filed in the United States District
Court for the Northern District of California (“civil action”),
LS&Co. brought claims of trademark infringement under Trademark

5 Registered September 2, 1980; third renewal September 2, 2010.
6 Registered December 9, 2003; § 8 and § 15 affidavits accepted
and acknowledged December 18, 2009.
Opposition No. 91175601; Cancellation No. 92049913

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Act § 32, false designation of origin and false description
under Trademark Act § 43(a), and dilution under Trademark Act
§ 43(c) against A&F’s mark (that is, the same mark in
application Serial No. 78766368 and Supplemental Register
Registration No. 3451669), seeking injunctive relief. LS&Co.
asserted the same four registrations that it pled in the
opposition and cancellation proceedings.
LS&Co. alleged, in pertinent part, the following common to
all claims:
LS&CO. is informed and believes that A&F has in the
past and continues to manufacture, source, market
and/or sell clothing that displays stitching designs
that are confusingly similar to LS&CO.’s Arcuate
trademark, including but not limited to RUEHL brand
jeans bearing the design shown in Exhibit C (the “A&F
stitching design”). (civil action complaint, para. 11)

On the infringement claim, a jury verdict was rendered in
favor of A&F.
On the dilution claim, the Court sought advisory opinions
from the jury on the factual issues going to the elements of
the claim. The jury rendered its opinions that: 1) LS&Co.’s
mark is famous, 2) LS&Co.’s mark is distinctive, 3) the marks
are not “identical or nearly identical,” 4) A&F’s use of its
mark began after LS&Co.’s mark became famous, and 5) A&F’s use
of its mark is not likely to cause dilution by blurring of
LS&Co.’s mark. In its Findings of Fact and Conclusions of Law

7 Registered December 16, 2003; § 8 and § 15 affidavits accepted
and acknowledged December 24, 2009.
Opposition No. 91175601; Cancellation No. 92049913

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(“findings”), the District Court ruled, inter alia, that 1) A&F
has not incorporated LS&Co.’s mark into its mark as a
“separate, visually identifiable element” (findings, p. 12); 2)
A&F’s mark is not “virtually indistinguishable” from LS&Co.’s
mark (findings, p. 13); 3) LS&Co. did not establish that A&F
“is making commercial use of a mark that is identical or nearly
identical to” its mark (findings, p. 13).
Lastly, the Court found that LS&Co. had not met its burden
of establishing by a preponderance of the evidence that A&F’s
mark is likely to cause dilution by blurring (findings, p. 15).
On this point, the Court stated that it had considered all
relevant factors, including the degree of similarity between
the marks, the inherent or acquired distinctiveness of LS&Co.’s
mark, the extent to which LS&Co. is engaging in substantially
exclusive use of its mark, the degree of recognition of
LS&Co.’s mark, whether A&F intended to create an association
with LS&Co.’s mark, and any actual association between the
marks. The Court found, inter alia, that the marks are not
visually similar, that A&F did not intend to create an
association with LS&Co.’s mark, that there are numerous pocket
stitching designs in the marketplace, and that the degree of
inherent or acquired distinctiveness of LS&Co.’s mark does not
outweigh the factors that weigh in favor of A&F.
LS&Co. appealed the ruling on the dilution claim to the
United States Court of Appeals for the Ninth Circuit on the
Opposition No. 91175601; Cancellation No. 92049913

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question of the District Court’s application of the standard
that the marks must be found to be “identical or nearly
identical” in order for LS&Co. to prevail. The Ninth Circuit
reversed and remanded, holding that the “identical or nearly
identical” requirement no longer applied.8
Pursuant to Fed. R. Civ. P. 41(a)(2), LS&Co. voluntarily
dismissed its dilution claim with prejudice.
In both the opposition and cancellation proceedings, A&F
moved for summary judgment on the sole issue of whether the
claims before the Board are barred by claim preclusion and/or
issue preclusion. The motion has been fully briefed.
Analysis

8 On remand to the District Court, LS&Co. sought leave to amend its
complaint so as to address A&F’s use of the same mark on Gilly
Hicks® products, asserting that A&F’s use with respect to which
LS&Co. originally sought injunctive relief - use of the mark “on
Ruehl women’s jeans, sold at particular price points and particular
retail locations as well as on line” – had ceased (Joint Status
Conference Statement, p. 1; LS&Co.’s brief, p. 5). As LS&Co. states
in its brief:
On June 17, 2009, Abercrombie announced that it was
shutting down the Ruehl® brand, and that its Ruehl® retail
locations and on-line operations would cease by the end of
the fiscal year. … Thus, all use of the purported mark on
Ruehl® jeans ceased, resolving, in practical terms, the
entire dispute that was the subject of the civil action…

Also on June 17, 2009, Abercrombie filed a new trademark
application to register its stitching design, that
application became Supplemental Registration No.
3,849,062, for use of the design on “clothing, namely,
bottoms.” The specimen of use submitted to the PTO on
August 9, 2010, in support of that application shows the
design as used on a pair of Gilly Hicks® denim shorts. …
Gilly Hicks® products are sold at different stores than
were the Ruehl® products (the Ruehl® retail stores are, in
any event, now closed), and at different price points.
(LS&Co.’s brief, p. 4).

Opposition No. 91175601; Cancellation No. 92049913

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Summary judgment standard
Summary judgment is appropriate where the movant shows
that there is no genuine dispute as to any material fact and
that it is entitled to judgment as a matter of law. Fed. R.
Civ. P. 56(a). A party asserting that a fact cannot be or
is genuinely disputed must support its assertion by either
1) citing to particular parts of materials in the record, or
2) showing that the materials cited do not establish the
absence or presence of a genuine dispute, or that an adverse
party cannot produce admissible evidence to support the
fact. Fed. R. Civ. P. 56(c).
A movant for summary judgment carries the burden of
proof in regard to its motion. See Celotex Corp. v.
Catrett, 477 U.S. 317, 323-24 (1986). In deciding the
motion, the function of the Board is not to try issues of
fact, but to determine if there are any genuine disputes of
material fact to be tried. See TBMP § 528.01 (3d ed. 2011),
and cases cited therein.
To prevail on its motion with respect to either the
opposition or cancellation, A&F must prove that there is no
genuine dispute of material fact that the elements of claim
preclusion, or of issue preclusion, are satisfied such as to
bar LS&Co.’s dilution and likelihood of confusion claims.
Res judicata (claim preclusion)

The District Court denied LS&Co.’s motion for leave to amend.
Opposition No. 91175601; Cancellation No. 92049913

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While our primary reviewing court advises that “[c]aution
is warranted in the application of preclusion by the PTO,” see
Mayer/Berkshire Corp. V. Berkshire Fashions, Inc., 424 F.3d
1229, 76 USPQ2d 1310, 1314 (Fed. Cir. 2005), it is within the
Board’s discretion to apply preclusion where it is warranted.
See Parklane Hosiery Co., Inc. v. Shore, 439 U.S. 322 (1979).
Application of the doctrine of claim preclusion is
appropriate when:
(1) there is an identity of parties or their privies;
(2) there was an earlier final judgment on the merits
of a claim; and
(3) the second claim is based on the same set of
transactional facts as the first and should have
been litigated in the prior case.

See Sharp Kabushiki Kaisha v. Thinksharp, Inc., 448 F.3d
1368, 79 USPQ2d 1376, 1378 (Fed. Cir. 2006); Jet, Inc. v.
Sewage Aeration Systems, 223 F.3d 1360, 55 USPQ2d 1854, 1856
(Fed. Cir. 2000).
Clearly, the parties in the civil action are the same
parties to the opposition and cancellation proceedings.
The second element is also met here. On the infringement
claim, the jury, after a full trial before the District Court,
rendered a verdict on the merits of LS&Co.’s infringement claim
in favor of A&F, and on the dilution claim, as noted above,
rendered an advisory opinion. The District Court issued its
decision based on findings of fact and conclusions of law,
finding that LS&Co. had not met its burden of establishing that
Opposition No. 91175601; Cancellation No. 92049913

10

A&F’s mark is likely to cause dilution by blurring of LS&Co.’s
mark.
Regarding the third element, our primary reviewing court
has found that, because of “significant differences” between
the transactional facts required to establish infringement in a
district court, and cancellation of a registration at the
Board, claim preclusion cannot serve to bar a petition for
cancellation based upon an earlier infringement proceeding.
See Jet, Inc. v. Sewage Aeration Systems, 223 F.3d 1360, 55
USPQ2d 1854, 1857 (Fed. Cir. 2000). See also Treadwell’s
Drifters Inc. v. Marshak, 18 USPQ2d 1318, 1321 (TTAB 1990)
(“[T]he civil action was based on a claim of injury resulting
from respondent’s use of his mark in commerce; the instant
claim, however, is a claim that petitioner believes it is
damaged by registration of respondent’s mark. Thus, the claims
are fundamentally different.”) (emphasis in original).
In Jet, Inc., the Federal Circuit also acknowledged that
the Board has held that claim preclusion does not apply between
infringement and opposition proceedings. Jet Inc. v. Sewage
Aeration Sys., 55 USPQ2d at 1858, n.1. As noted therein, the
Board has stated that “[A] claim of infringement before the
court and a claim of priority and likelihood of confusion
before this Board are different claims. The former claim is,
in essence, a claim of injury resulting from applicant's use of
its mark in commerce; the latter claim, in essence, is a claim
Opposition No. 91175601; Cancellation No. 92049913

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that opposer believes it would be damaged by registration of
applicant's mark” (emphasis in original). American Hygienic
Labs, Inc. v. Tiffany & Co., 228 USPQ 855, 857 (TTAB 1986).
Accordingly, the third element of claim preclusion has not
been met with respect to either Cancellation No. 92049913 or
Opposition No. 91175601.9
Collateral estoppel (issue preclusion)
In the absence of claim preclusion, the related
principle of collateral estoppel may bar relitigation of the
same issue in a second action. See Mayer/Berkshire Corp. v.
Berkshire Fashions Inc., 76 USPQ2d at 1312.
Regarding whether issue preclusion, or collateral
estoppel, is applicable based on a district court's
decision,
[t]he doctrine of collateral estoppel ... normally
will bar the relitigation of an issue of law or
fact that was raised, litigated, and actually
decided by a judgment in a prior proceeding
between the parties, if the determination of that
issue was essential to the judgment, regardless of
whether or not the two proceedings are based on
the same claim.

NLRB v. United Technologies Corp., 706 F.2d 1254, 1260 (2d
Cir. 1983). The application of collateral estoppel
requires:

9 The Federal Circuit also noted that the particular facts of certain
cases may allow issue preclusion to bar relitigation of the issue of
likelihood of confusion. Jet, Inc. v. Sewage Aeration Systems, 55
USPQ2d at 1857. The application of issue preclusion to LS&Co.’s
claims in both the opposition and cancellation is discussed below.

Opposition No. 91175601; Cancellation No. 92049913

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(1) identity of an issue in the current and a prior
proceeding;
(2) actual litigation of that issue in the prior
proceeding;
(3) necessity of a determination of the issue in
entering judgment in the prior proceeding; and
(4) a full and fair opportunity existed, for the party
with the burden of proof on that issue in the
second proceeding, to have litigated the issue in
the prior proceeding.

See Mayer/Berkshire Corp. v. Berkshire Fashions Inc., 76
USPQ2d at 1313.
The first and third elements have been met. In the
District Court, as well as in the opposition and cancellation,
the grounds asserted require that LS&Co. prove that the
parties’ marks are similar. Thus, both the civil action and
the Board proceedings squarely raise the issue of the degree of
similarity or dissimilarity between the marks. See Trademark
Act § 43(c)(2)(B)(i). Determination of this element of the
dilution claim was key, regardless of whether the standard to
be applied was whether A&F’s use was or was not of an
“identical or nearly identical” mark.
Moreover, the issue of the similarity or dissimilarity
between the marks was necessarily central to the jury’s
determination that A&F’s use of its mark is not infringing, as
well as the District Court’s determination that A&F’s use of
its mark is not likely to cause dilution by blurring. Indeed,
in its findings of fact regarding the dilution claim, the
District Court discussed, in detail, evidence that had been put
forth by the parties, such as their respective experts’
Opposition No. 91175601; Cancellation No. 92049913

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findings regarding a survey conducted by LS&Co.’s expert on the
matter of the public’s recognition of its mark.
LS&Co.’s argument that the issue litigated in the civil
action no longer exists because A&F’s use of the mark “on
Ruehl® brand women’s jeans, sold in Ruehl® stores and on the
internet at prices starting from $75/pair – had ceased entirely
by the time of remand” (LS&Co. brief, p. 10), and that “the
only current use of the design by Abercrombie is on its Gilly
Hicks® brand products – not involved in the Ruehl® action, and
specifically not permitted by the Court to be litigated in the
Ruehl® action” (LS&Co. brief, p. 2) is unpersuasive. Our
analysis of the likelihood of confusion issue centers on the
thirteen factors set forth in In re E.I. DuPont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973) (“duPont
factors”). While we do not ignore that changes in marketing,
advertising, selling and/or channels of trade for the goods
identified in an application or registration may, in some
cases, constitute changed circumstances such as might alter the
application of any one or more duPont factors, here, the duPont
factors that are most germane to LS&Co.’s claims remain the
same. That is, were Board to determine A&F’s right to
registrability and continued registrability, it would do so on
the basis of the key duPont factors of the degree of similarity
between the parties’ marks, and the comparison of the parties’
goods based on the goods as they are identified in the
Opposition No. 91175601; Cancellation No. 92049913

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respective application and registrations, without limitations
or restrictions that are not reflected therein. See Hewlett-
Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d
1001, 1004-05 (Fed. Cir. 2002); Kangol Ltd. v. KangaROOS
U.S.A., Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992).
Here, the goods of the parties are identical, and since the
time the civil action was litigated, neither party’s mark has
changed, the parties’ identified goods have not changed, and
the fact that none of the identified goods are limited by
channels of distribution or trade has not changed.
To the extent that LS&Co. asserts that the factual
analysis of the remaining duPont factors would change if
applied with respect to A&F’s Gilly Hicks® brand products,
based on, for example, a change in the price at which or stores
in which these goods are or will be sold, LS&Co.’s assertion is
incorrect. As indicated, neither LS&Co.’s registrations, nor
A&F’s application and registration, have any restrictions as to
price, channels of trade or classes of consumers. Because the
registrations and application at issue are not restricted in
any way, it is presumed that the scope of the goods encompasses
all of the goods of the nature and type described, that they
would travel in all channels of trade normal for those goods
and to all classes of prospective consumers for those goods.
See Coach Services Inc. v. Triumph Learning LLC, 96 USPQ2d
1600, 1608 (TTAB 2010), remanded on other grounds, __ F.3d __,
Opposition No. 91175601; Cancellation No. 92049913

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101 USPQ2d 1713, 1722 (Fed.Cir. 2012) (“The Board correctly
recognized that, because Triumph’s description of goods is not
limited to sales to educational professionals, the goods are
presumed to travel in all normal channels and to all
prospective purchasers for the relevant goods.”).
In any event, we are not persuaded that such an analysis
would give rise to or would involve any issue that is different
from the issue which has already been litigated. Even if the
duPont factors were specifically applied to A&F’s Gilly Hicks®
brand products, the degree of similarity in the marks and the
identical nature of the identified goods, would remain
determinative factors. Consequently, the key factual issue
that was necessary to a determination of infringement, and that
would be necessary to a determination of likelihood of
confusion in the opposition and cancellation, is the same
whether the relevant claim is directed to A&F’s use of its mark
on the Ruehl® brand, the Gilly Hicks® brand, or some other
brand or line of its identified goods.
Turning to the second element of issue preclusion, this
element has been met. As noted above, the issues litigated in
the civil action included the degree of similarity or
dissimilarity between the marks, and the jury and the District
Court reached their findings of fact and issued rulings on both
the infringement and dilution claims after the presentation of
Opposition No. 91175601; Cancellation No. 92049913

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evidence and arguments on this and the other elements of the
claims.
We find unpersuasive LS&Co.’s argument, with respect to
its dilution claim, that its voluntary dismissal of that claim
does not constitute “adequate litigation of the issues to give
rise to issue preclusion” (LS&Co.’s brief, p. 2). The District
Court made a key finding that defeats the dilution claim,
namely, that the marks are not visually similar. Cf. Kellogg
Co. v. Pack’Em Enterprises, Inc., 14 USPQ2d 1545 (TTAB 1990),
aff’d 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991). It is
clear from the findings of fact that the Court based its
decision on a conclusion of fact that A&F did not incorporate
LS&Co.’s mark into its own mark as a “separate, visually
identifiable element.” It also found, for example, that
LS&Co.’s survey evidence was not entitled to great weight.
Moreover, LS&Co. did not appeal these findings; it appealed the
application of the “identical or nearly identical” standard.
Thus, the issue of the degree of similarity or dissimilarity
between the marks was litigated, and LS&Co.’s dismissal of its
dilution claim after the Ninth Circuit reversed and remanded
does not change the prior litigation on which the District
Court based its decision.
Furthermore, given that the primary objective of the
preclusion doctrines is to bar relitigation of claims and
issues that have already been heard, to hold otherwise would
Opposition No. 91175601; Cancellation No. 92049913

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allow a party who loses on a claim at trial to avoid preclusion
(and thus potentially allow needless relitigation) by simply
dismissing its claim.
Finally, the fourth element is met inasmuch as LS&Co.
clearly had a full and fair opportunity to litigate the issue
of the degree of similarity or dissimilarity between its mark
and A&F’s mark. LS&Co. does not contend otherwise.
Conclusion
Accordingly, we find that A&F has met its burden of
demonstrating that, with respect to both the opposition and
cancellation, the record shows that there is no genuine
dispute of material fact that the elements of issue
preclusion exist and thus operate to bar LS&Co.’s dilution
and likelihood of confusion claims against application
Serial No. 78766368 and Registration No. 3451669. In view
thereof, A&F’s motion for summary judgment is hereby
granted.
Opposition No. 91175601 and Cancellation No. 92049913
are hereby dismissed with prejudice.