Levi Strauss & Co. v. Abercrombie & Fitch Trading Co.
719 F.3d 1367
Fed. Cir.2013Background
- Levi Strauss holds long-standing Arcuate stitching trademarks and monitors competing designs.
- Abercrombie sought broad registration for a mirror-image stitching design on multiple clothing lines and later launched Ruehl line uses.
- Levi Strauss challenged Abercrombie’s registrations and sued Abercrombie in district court for infringement and dilution; PTO stayed pending outcome.
- District court trial found no infringement by Ruehl line; dilution claim was decided against Levi Strauss in 2009.
- Ninth Circuit reversed the dilution judgment in 2011, holding dilution does not require identity of marks; Ruehl brand later shut down.
- PTO proceedings resumed; Board dismissed Levi Strauss’s challenges as barred by issue preclusion (and alternatively by claim preclusion), which Levi Strauss appeals.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether issue preclusion bars PTO challenges | Levi Strauss argues prior district-court findings cover broader registrations. | Abercrombie contends prior findings adequately bar the PTO challenges. | No; issue preclusion does not bar the PTO challenges. |
| Whether claim preclusion bars PTO challenges | Levi Strauss contends prior judgments prevent relitigation in PTO. | Abercrombie argues prior judgments on infringement/dilution preclude related actions. | No; claim preclusion does not apply due to differing transactional facts. |
| Whether the district court judgments were extant final judgments on merits for preclusion | Levi Strauss relies on 2009 infringement and 2011 dilution judgments. | Abercrombie relies on these judgments for preclusion. | Judgments were not extant final merits judgments for preclusion to apply to PTO proceedings. |
Key Cases Cited
- Jet, Inc. v. Sewage Aeration Sys., 223 F.3d 1360 (Fed. Cir. 2000) (four conditions for issue preclusion; pragmatic transactional facts)
- Mayer/Berkshire Corp. v. Berkshire Fashions, Inc., 424 F.3d 1229 (Fed. Cir. 2005) (broader PTO scope vs. infringement scope; lack of preclusion due to different facts)
- Parklane Hosiery Co. v. Shore, 439 U.S. 322 (U.S. 1979) (final judgment on merits; same cause of action standard)
- Butler v. Eaton, 141 U.S. 240 (U.S. 1891) (reversal of judgment defeats preclusion)
- United States Postal Serv. v. Gregory, 534 U.S. 1 (U.S. 2001) (preclusion principles in reconsideration context)