Levi Strauss and Co. has landed a partial win in the latest round of its trademark case over another party’s use of the “GREEN TAB” brand name – along with little fabric tabs – on recycled denim products and services. In an order on March 1, U.S. Magistrate Judge Virginia K. DeMarchi of the U.S. District Court for the Northern District of California sided with the San Francisco-based denim giant in its bid for summary judgment on some the trademark infringement and unfair competition claims that it waged against Defendant David Connolly. At the same time, it refused to decide a number of Levi’s claims early, including its trademark dilution claim, thereby, paving the way for elements of the case to move ahead.
Some Background: Levi’s filed suit against Connolly in federal court in California in July 2022, taking issue with his use of the GREEN TAB name on rival apparel items, namely jackets, and in connection with recycling services, arguing that the brand name infringes and dilutes its “tab mark family,” which consists of “word marks that reference the history and heritage of the tab trademark, including RED TAB, ORANGE TAB, and SILVERTAB.” At the same time, Levi’s claims that Connolly’s manufacturing, marketing, and sale of apparel products bearing “lookalike” fabric tab devices and pocket-stitching that mirrors its Arcuate trademark similarly runs afoul of federal trademark law.
Following the court’s denial of Connolly’s motion to dismiss in March 2023 (in which he argued, in part, that as of the start of the case, Levi’s had never used a green fabric tag or the “GREEN TAB” word mark), Levi’s moved for summary judgment on its federal trademark infringement, unfair competition, and dilution claims for both liability and injunctive relief purposes.
In an order on March 1, Judge DeMarchi granted Levi’s motion in part and denied it in part …
Trademark Infringement
> The Tab Device & Tab Word Marks: Delving into a likelihood of confusion analysis with regard to Levi’s tab device and its “tab family” trademarks, the court held that “there is no genuine issue of material fact regarding the likelihood of confusion” of Connolly’s use of “GREEN TAB” in connection with his apparel products and Levi’s ORANGE TAB AND SILVERTAB trademarks. (The court noted that Levi’s uses those word marks on many of the same types of apparel as Connolly, including jackets.)
Based on the evidence in the record and Connolly’s deemed admissions, the court held that “no reasonable trier of fact could find in [his] favor with respect to the majority of the Sleekcraft factors, including the strength of the Levi’s marks; the similarity between those marks and [Connolly’s use of] GREEN TAB; the proximity or relatedness of the parties’ products; the similarity of the marketing channels used; the low degree of care likely to be used by purchasers; and Connolly’s intent to capitalize on [Levi’s] marks” by way of his use of the GREEN TAB brand name.
Not a total win for Levi’s, Judge DeMarchi sided with Connolly in part, finding that Levi’s did not demonstrate that it is entitled to summary judgment of infringement with respect to its tab device or any of the tab-centric word marks based on Connolly’s recycling services. While Levi’s argued that it offers “environmental initiatives and product lines that reflect its commitment to sustainability,” the court found that “nothing in the record presented demonstrates that [Levi’s] offers denim recycling services or that it has any plans to do so.”
The court similarly sided with Connolly when it refused to grant summary judgment to Levi’s on its federal trademark infringement claim for its RED TAB mark, as Levi’s “has not sufficiently demonstrated that Connolly’s admissions establish a likelihood of confusion with respect to [that] mark specifically,” which Levi’s has primarily used in connection with customer services.
TLDR: The court granted Levi’s motion for summary judgment on liability for federal trademark infringement regarding Connolly’s use of GREEN TAB in connection with “[c]lothing, namely, jackets, pants, shirts, caps,” etc. with respect to Levi’s: (i) tab device mark (for use on apparel and retail services); and (ii) ORANGE TAB and SILVERTAB word marks but denied the rest of its motion.
> The Arcuate Trademark: Refusing to decide this on summary judgment, the court held there is no genuine dispute of material fact that “Connolly’s apparel products are related to those of [Levi’s]; that Levi’s Arcuate registrations include jackets; and that both parties use the internet to market or otherwise promote their respective products and services.” However, the court held that there are factual matters at issue, including whether the stitching on Connolly’s products is similar enough to the Arcuate trademark, that make this issue inappropriate for summary adjudication.
Unfair Competition (False Designation of Origin and False Description): The court largely sided with Levi’s here on the basis that the analysis for unfair competition largely mirrors that of trademark infringement, with “[t]he ‘ultimate test’ for unfair competition being the same as for trademark infringement: whether the public is likely to be deceived or confused by the similarity of the marks.” Judge DeMarchi held that there since there is no genuine issue of material fact regarding liability for trademark infringement based on Connolly’s use of GREEN TAB in connection with clothing, with respect to Levi’s tab trademark (including the “Retail Services Tab” mark), and the ORANGE TAB and SILVERTAB word marks, Levi’s motion for summary judgment on its federal unfair competition claim is granted on that same basis with respect to those marks.
Dilution of Levi’s Trademarks: Finally, reflecting on Levi’s dilution claim, the court stated that Levi’s suggests that “when the parties’ respective products are competitive, the dilution analysis is similar to the test for likelihood of confusion under a traditional infringement analysis.” However, the court swiftly shot down that argument, asserting that the statute (section 43(c) of the Lanham Act) indicatesthat “confusion and competition are irrelevant to a dilution claim.”
Against that background, the court refused to grant Levi’s motion for summary judgment regarding liability on its dilution claim, holding that Levi’s analysis on dilution is “cursory and does not sufficiently demonstrate that Connolly’s deemed admissions establish [that Levi’s marks are famous, and that its marks had such status before he engaged in the conduct at issue in this suit] that Levi’s is entitled to summary judgment on dilution as to any of its specific marks.”
THE BIGGER PICTURE: The case is an interesting one, in part, because of the broader adoption of sustainability-centric marks by brands in the fashion/apparel space. The lawsuit comes as a growing number of brands are adorning certain wares – ones that stem from “sustainability”-focused initiatives – with specific indicators, which, in many cases, consists of plays on one of the brand’s existing marks. As we previously reported, the likes of Prada, Louis Vuitton, Valentino, and Moncler are among the brands that have introduced logos that suggest elements of sustainability, such as recycling, amid a surge in consumer awareness about and demand for sustainably made and marketed products.
Levi’s adoption of green tabs, including white tab with green lettering for “jeans produced with more climate friendly processes,” appears to fall pretty neatly into that category.
The case is Levi Strauss & Co. v. David Connolly, 5:22-cv-04106 (N.D. Cal.)
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