This month, Levi Strauss filed suit against Yves Saint Laurent America, Inc. in the United States District Court for the Northern District of California, where the Levi Strauss corporate headquarters is located. The complaint included three causes of action: trademark infringement, unfair competition, and trademark dilution. Each of these claims stem from Yves Saint Laurent’s use of a tab on its jean pocket, which Levi’s claims is highly similar to its registered trademarks. Levi’s has alleged that YSL is profiting from the sale of the allegedly infringing jeans and thereby has caused incalculable and irreparable damage to Levi’s goodwill and diluted its tab device trademark. Moreover, Levi’s has claimed that YSL has done so willfully, wantonly, maliciously, and with conscious indifference to Levi’s rights.
Levi Strauss has been operating since the 1850s and manufactures, markets, and sells a variety of apparel, all of which feature various Levi’s trademarks. Particularly at issue in this case is Levi’s famous tab device trademark consisting of a textile marker or other material sewn into one of the regular structural seams of the garment. The denim giant utilizes this tab device trademark on its jeans, pants, jackets, shirts, and other clothing products. This tab was first displayed on a pair of pants in 1936 when the then National Sales Manager proposed placing a folded cloth ribbon in the structural seams of the rear pocket in order to provide “sight identification” of Levi’s products. In other words, Levi’s intended this “little red, or white, or blue tab” to serve as an indicator of source, that is, as a trademark of Levi Strauss.
Levi’s aforementioned tab device trademark has become inconstestable in a number of filing classes. More specifically, Levi Strauss holds the rights to use its tab device mark for men’s, women’s and children’s jeans, jackets, trousers, shirts, t-shirts, blouses, pants, shorts, and overalls. A trademark becomes inconstestable when it has been in use in commerce continuously for five consecutive years subsequent to the date of registration and still remains in use. Incontestable trademarks, while not wholly immune from challenge, are much more difficult to invalidate.
The complaint centers around Yves Saint Laurent’s manufacturing, promotion, and sale of garments, namely, pants, bearing pocket tab devices which Levi’s claims are “highly similar” to its trademark. One notable difference between Levi’s tab device trademark and YSL’s jean pocket tabs is the placement thereof. Levi’s iconic tab has traditionally been sewn on the side of the right back pocket located toward the middle of the pants. By contrast, Yves Saint Lauren has placed its tabs on the outer side of the right back pocket.
Ultimately, trademark infringement will be found if there exists a likelihood of confusion between YSL’s jean pocket tabs and Levi Strauss’ tab device trademark. A likelihood of confusion exists when the use of a mark so resembles a registered mark such that a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the trademark owner and alleged infringer. This determination is made on a case-by-case basis with regard to a number of factors, including the similarity of the marks, similarity of the goods and/or services connected to the marks, and the marketing channels under which the goods and/or services travel. Essentially, Levi Strauss has the burden of demonstrating that potential purchasers of its products are likely to be confused into believing there is an association between YSL’s tabbed jeans and Levi’s genuine apparel.
Dissimilarly, trademark dilution does not require a likelihood of confusion but rather, necessitates the use of a famous mark by a third party such that the distinctive quality of the famous mark is diluted. Put another way, dilution exists when another’s use of a registered trademark lessens the uniqueness or source-identifying ability of the registered mark. Moreover, dilution can occur via blurring, in which the connection in consumers’ minds between the registered mark and the accompanying goods and/or services is weakened, or tarnishment, in which the alleged infringer’s use is unsavory or unwholesome or is in connection with inferior products.
For relief, Levi’s prays for not only a judgment declaring YSL in violation of its trademark rights but also injunctive relief. Indeed, a permanent injunction would require Yves Saint Lauren to cease manufacturing, advertising, promoting, or selling any goods bearing Levi’s trademark. Further, Levi Strauss also requested the court require YSL to deliver any unsold infringing products to Levi’s, including any pants or other clothing, packaging, labeling, advertising and promotional material, and all plates, patterns, molds, matrices, and other material used for producing the allegedly infringing goods. Finally, Levi’s requests the court award it damages, including its lost profits, YSL’s profits, and costs incurred during the litigation.
Over time, some critics have referred to Levi Strauss as a “trademark bully” due to it bringing numerous lawsuits against alleged infringers of its “tab device” trademark. On the one hand, it seems dubious that the denim legend could claim a monopoly on all jean pocket tabs. On the other hand, with millions of dollars in revenue potentially at stake, Levi’s staunch intellectual property position is hardly surprising.