Not only is Levi Strauss cleaning up its supply chain, but the San Francisco-based denim brand is also taking infringers to task for using its trademark protected name, as well as its iconic little red tab. On Tuesday, Levi Strauss (“Strauss”) filed a complaint against Richard I Spiece Sales, an Indiana-based company doing business as Denim Express (“Denim Express”), in the U.S. District Court for the Northern District of California. Strauss is claiming Denim Express has sold garments that “infringe and dilute [its] Tab trademark.”
Strauss has long-held federal trademark rights in the famous “Tab Device Trademark,” the little red tab that bears the company’s name and is stitched into the right seam of the back pocket, which was originally designed in 1936 to provide “sight identification” of its products in a crowded denim market.
In its complaint, Strauss alleges that Denim Express manufactures and sells products that bear pocket tab devices similar to Strauss’s protected trademark, and that the marks are likely to confuse consumers about the source of the products (the key inquiry in a trademark infringement matter). The complaint asserts that “substantial quantities of jeans bearing pocket tab devices” have been sold by Denim Express that are highly similar to Strauss’s trademarked Tab. According to the denim giant, given the distinctiveness of its Tab trademark, the only purpose of another clothing distributor putting a colored tab on an outside pocket of its own denim is for “the express and sole purpose of copying our mark, and confusing the customer.”
Strauss further argues that Denim Express’ actions “have caused and will cause Strauss irreparable harm for which money damages and other remedies are inadequate,” and that Denim Express manufactured the goods with “knowledge and intent to cause confusion, mistake, or deception.” As such, Strauss is seeking damages, pre-judgment interests, attorneys’ fees, costs and disbursements incurred in connection with the lawsuit, and investigative expenses.
This lawsuit at hand, which comes after Strauss sent a cease and desist letter to Denim Express earlier this year demanding that the company remove the allegedly infringing garments from its e-commerce site, is hardly the first time these parties have clashed in court.
In 2011, Strauss filed suit against Spiece Sales Co. (“Spiece”), which began selling Levi Strauss denim in its brick-and-mortar stores in 1978, as authorized by Strauss. In 2000, the denim giant authorized Spiece to sell its products on Spiece’s website, www.denimexpress.com. The agreement allowed for Strauss to accept Spiece’s purchase orders conditioned upon Spiece complying with all applicable Strauss policies and paying for the products it received.
In 2008, Strauss notified Spiece that the company was in violation of Strauss’s internet policies, and two years later, Spiece had fallen behind on payments to Strauss, prompting Strauss to revoke Spiece’s privilege to sell its products online and gave Spiece the option of returning the unused inventory or paying for it. Spiece did neither, and Strauss sued. The trial court ordered Spiece to pay Strauss upwards of $315,000, and also ruled against Spiece on its counterclaims, which included breach of contract, constructive fraud and violations of the Franchise Act.
Strauss has since become known for its litigation history. According to a 2007 article from the New York Times, Strauss “has emerged as the most litigious in the apparel industry when it comes to trademark infringement lawsuits, firing off nearly 100 against its competitors since 2001. That’s far more than General Motors, Walt Disney or Nike, according to an analysis by research firm Thomson West.” Recent lawsuits, “which [Strauss] says it is compelled to file to safeguard the defining features on its jeans, are not about the money — one settled for just $5,000 in damages. Instead, the company says, they are about removing copycats from stores. Nearly all the cases have settled out of court, with [Strauss’s] smaller rivals agreeing to stop making the offending pants and to destroy unsold pairs.”