Levi Strauss is notorious for filing lawsuits against both counterfeiters and its rivals, alike, when they make use of any of its “world famous” trademark-protected branding elements, from the small red tabs that adorn most of its jeans to the stitching that appears on its pants’ pockets. Having long-occupied the title of a denim giant, the San Francisco-based brand was, in the mid-2000’s, also given a position among the world's most litigious companies. And for good reason.
As of this week, Levi’s has added another lawsuit to the long list of cases it has initiated in the past: A trademark suit against Vineyard Vines in federal court in Northern California, in which Levi’s is not only claiming rights in the red tab that reads “LEVI’S” on the rear pocket of its pants, but is seemingly claiming rights in tabs of virtually any color – with any writing – that are attached to the rear pocket of pants, regardless of whether they are jeans or not.
According to its complaint, Levi’s began using its little red tab in 1936 when its then “National Sales Manager, Leo Christopher Lucier, proposed placing a folded cloth ribbon in the structural seams of the rear pocket. The purpose of this ‘tab’ was to provide ‘sight identification’ of [Levi]’s products.” The complaint goes on to state, “Mr. Lucier asserted that ‘no other maker of overalls can have any other purpose in putting a colored tab on an outside patch pocket, unless for the express and sole purpose of copying our mark, and confusing the customer.’”
Fast forward 81 years and Levi’s holds an arsenal of trademark registrations for the various tabs it uses on its jeans. While some of Levi’s federal trademark registrations make specific mention of the color of the tab (red, white, or black, for instance) and the content of the tab itself (“with the name ‘Levi's’ superposed thereon”), other do not.
Some of its other registrations extend to “a small marker or tab affixed to the exterior of the garment at the hip pocket,” without indicating that it must be a specific color or that it must say “Levi’s.” Such registrations stand to provide Levi’s with very broad rights.
Enter: Vineyard Vines. According to Levi’s, the Connecticut-based retailer has – “beginning at some time in the past and continuing until the present” – been manufacturing, marketing, and selling “substantial quantities of products,” namely “jeans and pants” that bear a pocket tab with its own trademark-protected whale logo. Levi’s alleges that as a result of the sale of garments bearing a tab design, Vineyard Vines has “obtained and continues to obtain substantial profits.”
In addition to deriving a profit from the sale of the tabbed pants, Levi’s claims that Vineyard Vines is also “causing incalculable and irreparable damage to [Levi’s] goodwill and diluting the capacity of its tab trademark to differentiate LEVI’S® products from others.” That is the purpose of a trademark, after all, to enable consumers to easily distinguish between the products of different companies based of their use of a name or logo, etc.
Levi’s further alleges that by selling pants with tabs on them, Vineyard Vines is “likely to cause confusion, mistake, or deception by or in the public as to the affiliation, connection, association, origin, sponsorship, or approval of Vineyard Vines’ products to the detriment of [Levi’s].” In short: Consumers are likely to see the Vineyard Vines pants and think that they are either Levi’s pants or maybe a collaboration between the two companies.
And still yet, Levi’s claims that Vineyard Vines knows exactly what it is doing. In addition to allegedly profiting from the goodwill that comes hand-in-hand with Levi’s tab trademark, the denim giant asserts that “Vineyard Vines’ conduct is aggravated by … willfulness, wantonness, malice, and conscious indifference to the rights and welfare of [Levi’s].”
As a result, Levi’s has asked the court to order Vineyard Vines to immediately and permanently stop “manufacturing, producing, sourcing, importing, selling, offering for sale, distributing, advertising, or promoting any goods that display any words or symbols that so resemble [Levi]’s tab trademark as to be likely to cause confusion, mistake, or deception, on or in connection with any product that is not authorized by or for [Levi’s].” Levis’ is also seeking an unspecified amount of monetary damages, which will be determined at trial.
* The case is Levi Strauss & Co., v. Vineyard Vines, LLC, 4:17-cv-05652-DMR (N.D. Cal.).