Levi Strauss & Co. v. Connolly

Background

Levi Strauss & Co. asserted federal and California claims for trademark infringement, trademark dilution, and unfair competition. Its motion sought summary judgment under Rule 56 on liability for its federal trademark infringement, federal unfair competition, and federal dilution claims. Levi Strauss stated that it intended to waive damages and seek injunctive relief only. David Connolly opposed the motion.

Levi Strauss owns registered and common-law rights in several marks, including the Tab trademark, the Retail Services Tab trademark, the RED TAB, ORANGE TAB, and SILVERTAB word marks, and the Arcuate trademark. Connolly began selling denim jackets and offering denim recycling services under the GREEN TAB brand around 2021. Levi Strauss claimed that Connolly’s use of GREEN TAB and copies of the Arcuate design infringed its marks.

Connolly did not timely respond to Levi Strauss’s requests for admission. The court therefore deemed the matters in those requests admitted under Federal Rule of Civil Procedure 36, and Connolly had not sought to withdraw or amend the admissions. The admissions established, among other things, that Levi Strauss owned valid registrations for the relevant marks; Connolly knew of those marks before adopting GREEN TAB; he intended to capitalize on their goodwill; and GREEN TAB was likely to cause consumer confusion regarding the source, sponsorship, approval, or affiliation of the goods and services.

Trademark infringement

For infringement of a federally registered mark, Levi Strauss had to establish ownership of a valid, protectable mark and a likelihood that Connolly’s use would cause consumer confusion. Based on the deemed admissions and other evidence, the court found no genuine issue of material fact regarding Connolly’s use of GREEN TAB on the specified apparel products—jackets, pants, shirts, caps, undergarments, socks, underpants, singlets, and certain 100% cotton denim clothing—with respect to Levi Strauss’s Tab trademark, including the Retail Services Tab trademark, and the ORANGE TAB and SILVERTAB word marks. The court granted summary judgment on liability for infringement as to those uses and marks.

The court did not grant summary judgment on infringement involving Connolly’s denim recycling services. Nothing in the record showed that Levi Strauss offered denim recycling services or planned to do so, and Levi Strauss acknowledged that those services were not covered by its registrations. The court also denied summary judgment regarding the RED TAB mark because its cited registration covered customer loyalty and customer club services rather than the apparel products at issue, and Levi Strauss had not sufficiently shown a likelihood of confusion specific to that mark.

The court denied summary judgment regarding the Arcuate trademark. Although the parties’ products and marketing channels appeared related and Levi Strauss presented a jacket that it contended bore a replica of the Arcuate stitching design, Connolly disputed whether the designs were confusingly similar. The court concluded that the differences between the designs raised factual matters for trial rather than summary adjudication.

Federal unfair competition

The court explained that federal unfair competition under Section 43(a) of the Lanham Act does not require a registered mark, but the ultimate question is also whether consumers are likely to be confused or deceived. For the same reasons supporting the infringement ruling, the court granted summary judgment on liability for federal unfair competition involving GREEN TAB on the specified apparel products and Levi Strauss’s Tab, Retail Services Tab, ORANGE TAB, and SILVERTAB marks. The court denied the motion otherwise.

Dilution

Trademark dilution protects a famous and distinctive mark from uses likely to weaken its distinctiveness or harm its reputation, even without competition or likely consumer confusion. Although the deemed admissions established that Levi Strauss’s marks were famous and had that status before Connolly’s conduct, the court found Levi Strauss’s dilution analysis too cursory to show entitlement to summary judgment as to any specific mark. The court denied summary judgment on liability for the dilution claim.

Disposition

The court granted in part and denied in part Levi Strauss & Co.’s motion for summary judgment regarding liability on its federal trademark infringement and unfair competition claims. It granted summary judgment only for the specified GREEN TAB apparel uses involving the Tab, Retail Services Tab, ORANGE TAB, and SILVERTAB marks, and denied the motion otherwise. The court denied the motion regarding liability on the federal dilution claim. The parties were ordered to confer and file a status report concerning a schedule for further proceedings on remaining claims and issues and other matters that could facilitate disposition of the case.