RIPPLE, Senior Circuit Judge:
Levi Strauss & Co. ("Levi Strauss") seeks review of a district court judgment that Abercrombie & Fitch Trading Co. ("Abercrombie") did not dilute Levi Strauss's trademarked "Arcuate" design in violation of the Trademark Dilution Revision Act of 2006 ("TDRA"), 15 U.S.C. § 1125(c). Levi Strauss maintains that the district court applied an incorrect legal standard in evaluating its dilution claim, namely that the junior mark be "identical or nearly identical" to the senior one. We agree with Levi Strauss that the "identical or nearly identical" standard did not survive Congress's enactment of the TDRA and that the district court's use of the incorrect standard was not harmless error. Accordingly, we reverse the judgment of the district court and remand the case for further proceedings consistent with this opinion.
Levi Strauss created, and began selling, blue jeans in the 1870s. Since 1873, the company has stitched the back pocket of its jeans with two connecting arches that meet in the center of the pocket; Levi Strauss holds a federally registered trademark on this "Arcuate" design. Sales of garments bearing the Arcuate mark have accounted for more than ninety-five percent of Levi Strauss's revenue over the past thirty years, totaling roughly fifty billion dollars. Levi Strauss actively monitors use of competing stitching designs and enforces its trademark rights against perceived infringers.
In 2006, Abercrombie began using a stitching design on the back pockets of its jeans that, according to Levi Strauss, "incorporates the distinctive arcing elements of the Arcuate trademark." Appellant's Br. 4. Abercrombie's "Ruehl" design consists of two less-pronounced arches that are connected by a "dipsy doodle," which resembles the mathematical sign for infinity. The design on the Abercrombie jeans sits lower on the pocket than Levi Strauss's Arcuate design.
In 2007, Levi Strauss brought an action against Abercrombie for trademark infringement, unfair competition and trademark dilution under both federal and California state law. Before trial, Levi Strauss dropped its state-law trademark dilution claim, and it withdrew its claim for monetary relief on its federal dilution claim. Consequently, Levi Strauss's federal trademark dilution claim, for which it sought only injunctive relief, was tried before
During trial, Levi Strauss presented the testimony of Dr. Sanjay Sood. Dr. Sood conducted a survey to evaluate whether women associated Abercrombie's Ruehl design with Levi Strauss. Dr. Sood's "Confusion Survey" revealed that "[a]pproximately 30% of all respondents identified the Ruehl jeans as made, sponsored or endorsed by the same company that made the LEVI'S® jeans, as compared to lower percentages for the `control' jeans." Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., No. C 07-03752 JSW, 2009 WL 1082175, at *4 (N.D.Cal. Apr. 22, 2009). Dr. Sood testified that "the Ruehl design would erode the distinctiveness of the Arcuate mark, in light of what he opined was a significant level of confusion between the Ruehl jeans and the [Levi Strauss] jeans." Id. Dr. Sood also testified concerning a "Recognition Survey" that he had conducted. According to Dr. Sood, the survey revealed that "approximately 32% to 35% of the respondents actually associated the Arcuate mark with [Levi Strauss]." Id. at *5.
For its part, Abercrombie presented the testimony of Dr. Gerald Ford, who had been engaged in commercial marketing research for more than three decades and had offered expert testimony in over 50 trademark cases. Dr. Ford testified that Dr. Sood's confusion survey was not conducted according to generally accepted and standard practices; as a result, the survey was "`so flawed that it render[ed] the survey results' and Dr. Sood's conclusions `meaningless.'" Id. (internal citations omitted). Nevertheless, Dr. Ford acknowledged that, "[i]f a likelihood of confusion survey is conducted in a valid and reliable manner, a finding that ten percent or more of the population is confused is problematic to a trademark owner." Id. Dr. Ford opined that Dr. Sood's recognition survey was problematic; specifically, it "was flawed[ ] because it did not control for spurious recognition, used ambiguous questions, lacked an appropriate control cell, and suffered from order bias." Id.
As part of its deliberations, the district court requested that the jury provide advisory rulings on factual issues related to Levi Strauss's federal dilution claims. With respect to the elements of the dilution claim, the court asked the jury to answer the following question: "Is Abercrombie's Ruehl design identical or nearly identical to the Arcuate trademark?" ER 67. Although the jury later determined that the Arcuate trademark was famous and distinctive, it found that the marks were not identical or nearly identical and also determined that the Arcuate trademark was not likely to be diluted by the Ruehl design.
On April 22, 2009, the district court entered judgment in favor of Abercrombie on Levi Strauss's federal dilution claim. In its findings of fact, the district court noted that, "[w]ith the exception of visual depictions of the two designs, Dr. Sood's testimony regarding the results of the Confusion Survey was [Levi Strauss]'s only evidence that the Ruehl design was identical or nearly identical to the Arcuate mark." Levi Strauss & Co., 2009 WL 1082175, at *5 (emphasis added). Although the district court acknowledged that Dr. Sood's survey suggested confusion among thirty percent of the participants, the court determined that Dr. Ford's critique of Dr. Sood's methodology was persuasive and that his testimony was more reliable than that offered by Dr. Sood.
Turning to its conclusions of law, the court first reviewed the elements of a claim under the TDRA, 15 U.S.C. § 1125(c). The court stated:
Levi Strauss & Co., 2009 WL 1082175, at *7 (emphasis added). The district court noted that the advisory jury had not found that the Ruehl design and the Arcuate mark were "identical or nearly identical," a standard that required that "the two marks . . . be similar enough that a significant segment of the target group of customers sees the two marks as essentially the same." Id. (emphasis added).
After setting forth this standard for similarity, a standard which "`is more stringent than in the infringement context,'" id. at *8 (quoting adidas-America, Inc. v. Payless Shoesource, Inc., 546 F.Supp.2d. 1029, 1060 (D.Ore.2008)), the court observed that, although the evidence showed that Levi Strauss had "expended significant amounts of money advertising the Arcuate mark," this was not "a case where the two marks at issue involve only minor differences," id. The district court then reviewed aspects of the Arcuate mark and the Ruehl design and observed that "[t]his evidence demonstrates that a significant segment of the target group of customers would not view the marks as essentially the same." Id. (emphasis added). It concluded that, consistent with the advisory jury's finding, Levi Strauss "has not established that [Abercrombie] is making commercial use of a mark that is identical or nearly identical to the Arcuate mark." Id. at *9 (emphasis added). The court then concluded:
Id. (quoting Thane Int'l, Inc. v. Trek Bicycle Corp., 305 F.3d 894, 907 (9th Cir.2002); footnote omitted; emphasis added). The district court therefore entered judgment in favor of Abercrombie.
Levi Strauss submits that the district court erred in requiring it to establish that
Abercrombie, by contrast, bases its argument not on the language of the statute but, instead, on the case law of this court. It argues that, even after the passage of the TDRA, this court thrice has determined that a junior mark must be "identical or nearly identical" to that of the senior user in order for a trademark-dilution plaintiff to be entitled to relief. See Perfumebay.com Inc. v. eBay, Inc., 506 F.3d 1165 (9th Cir.2007); Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628 (9th Cir.2008); Visa Int'l Serv. Ass'n v. JSL Corp., 610 F.3d 1088 (9th Cir.2010).
To properly evaluate the parties' contentions, we must look at the origins of the "identical or nearly identical" standard, how it has been employed and whether it remains viable after the enactment of the TDRA.
The "identical or nearly identical" requirement traces its roots in this circuit to Playboy Enterprises, Inc. v. Welles, 279 F.3d 796 (9th Cir.2002). In that case, a former "Playmate of the Year," Terri Welles, had used this descriptive on a website devoted to the sale of her pictures and to the promotion of her services as a spokeswoman. Playboy sued Welles on various theories, including a federal trademark dilution claim under the prior statute.
Id. (emphasis added; footnote omitted).
Our authority for the "identical or nearly identical" language employed in Playboy Enterprises was Luigino's, Inc. v. Stouffer Corp., 170 F.3d 827, 832 (8th Cir.1999), and J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 24:90.2 (4th ed.2001). See Playboy Enters., 279 F.3d at 806 n. 41. In Luigino's, the Eighth Circuit held that, "[t]o support an action for dilution by blurring, `the marks must at least be similar enough that a significant segment of the two target groups of customers sees the two marks as essentially the same.'" 170 F.3d at 832 (quoting J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 24:90.1, at 24-145 (4th ed.1998)). In support of this proposition, the Eighth Circuit not only relied on McCarthy on Trademarks and Unfair Competition, but also Mead Data Central, Inc. v. Toyota Motor Sales, U.S.A., Inc., 875 F.2d 1026, 1029 (2d Cir.1989).
Tracing the ancestry of the standard a step further, Mead Data Central involved a trademark dilution claim brought under a New York state statute. According to the Second Circuit, the legislative history of that act stated "the purpose of the statute as preventing `the whittling away of an established trade-mark's selling power and value through its unauthorized use by others upon dissimilar products.'" Mead Data Cent., 875 F.2d at 1028 (quoting 1954 N.Y. Legis. Ann. 49; emphasis added by the Second Circuit). The court continued:
Id. at 1028-29 (internal citations omitted). The court stopped short of requiring that "the marks in question . . . be sufficiently similar that confusion may be created as between the marks themselves." Id. at 1029. Instead, it held that "the marks must be `very' or `substantially' similar and that, absent such similarity, there can be no viable claim of dilution." Id.
After Playboy Enterprises, we again employed the "identical or nearly identical" formulation in Thane International, Inc. v. Trek Bicycle Corp., 305 F.3d 894 (9th Cir.2002). In Thane, we grappled with the issue whether Thane's use of "OrbiTrek" diluted Trek's trademarked name. In considering the "Identity of the Marks," the court gave a more thorough explanation for its adoption of the "identical or nearly identical" standard:
Id. at 905 (emphasis in first paragraph added). Thus, Thane tied the requirement for identity or near identity to the language of the then-governing FTDA and to the tests that we had developed in interpreting the FTDA.
In adopting this standard, we also were persuaded by the legislative history of the
Id.
Finally, we observed, other courts similarly had adopted an "identical or nearly identical" requirement. Indeed, Playboy Enterprises had borrowed this standard from the Eighth Circuit's decision in Luigino's, and other circuits had employed equally stringent standards for similarity.
Thus, although the identical or nearly identical standard had its roots in pre-FTDA state dilution law, we determined in Thane that our adoption of the standard was rooted in the language of the FTDA, the legislative history and purpose of that statute, our prior interpretations of the FTDA, and the policies we believed were embodied in that statute.
After our decision in Thane, the Supreme Court handed down a decision that greatly impacted many courts of appeals' interpretations of the FTDA. In Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 123 S.Ct. 1115, 155 L.Ed.2d 1 (2003), the Court held, contrary to the approach that had been taken by this court, as well as the courts of appeals for the Second and Sixth Circuits, that the text of the FTDA "unambiguously requires a showing of actual dilution, rather than a likelihood of dilution." Id. at 433, 123 S.Ct. 1115 (emphasis added).
However, this requirement of actual dilution was not long-lived. In 2006, largely in response to the Moseley decision, Congress enacted the TDRA. In doing so, Congress did not simply alter the language on which the Court in Moseley had relied;
15 U.S.C. § 1125(c)(1). Subsection (c)(2) defines "dilution by blurring" accordingly:
15 U.S.C. § 1125(c)(2)(B).
Several aspects of the TDRA are worth noting. The first, as mentioned previously, is that Congress did not merely make surgical linguistic changes to the FTDA in response to Moseley. Instead, Congress created a new, more comprehensive federal dilution act. Furthermore, any reference to the standards commonly employed by the courts of appeals—"identical," "nearly identical," or "substantially similar"—are absent from the statute. The TDRA defines "dilution by blurring" as the "association arising from the similarity between a mark or a trade name and a famous mark that impairs the distinctiveness of the famous mark." Id. § 1125(c)(2)(B) (emphasis added). Moreover, in the non-exhaustive list of dilution factors that Congress set forth, the first is "[t]he degree of similarity between the mark or trade name and the famous mark." Id. § 1125(c)(2)(B)(i). Thus, the text of the TDRA articulates a different standard for dilution from that which we utilized under the FTDA.
Abercrombie claims that, despite the absence of any reference in the TDRA to the "identical or nearly identical standard," this standard nonetheless survived the passage of the TDRA. It points to three cases from this court to support that claim. Two of these cases, Perfumebay.com Inc. v. eBay, Inc., 506 F.3d 1165 (9th Cir.2007), and Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628 (9th Cir.2008), were addressed by the parties in their briefs; Abercrombie maintains that Levi Strauss's "entire appeal is foreclosed" by these cases. See Appellee's Br. 12. The third case, Visa
Our review of these cases leads us to conclude that the issue that we must decide today—whether, to establish dilution by blurring under the TDRA, the junior mark must be "identical or nearly identical" to the senior mark—was not presented or squarely resolved in these prior cases.
The first case on which Abercrombie relies is Perfumebay.com. In Perfumebay.com, eBay brought a dilution claim under California state law. In analyzing the state-law dilution claim, we observed that the state claim was subject to the same analysis as a federal claim, which required that "[t]he mark used by the alleged diluter . . . be identical, or nearly identical, to the protected mark for a dilution claim to succeed." Perfumebay.com, 506 F.3d at 1180 (internal quotation marks and citation omitted). Although applying California dilution law, we noted that our "emphasis on the extent to which the marks are nearly identical and the strength of the senior mark is bolstered by Congress' passage of the Trademark Dilution Revision Act of 2006," which explicitly included "`[t]he degree of similarity between the mark or trade name and the famous mark'" and "`[t]he degree of inherent or acquired distinctiveness of the famous mark'" in its dilution analysis. Id. at 1181 n. 9 (quoting 15 U.S.C. § 1125(c)(2)(B)).
We do not believe these observations ought to be considered a binding determination that the "identical or nearly identical" standard survives the passage of the TDRA. We have held that, "where a panel confronts an issue germane to the eventual resolution of the case, and resolves it after reasoned consideration in a published opinion, that ruling becomes the law of the circuit, regardless of whether doing so is necessary in some strict logical sense." United States v. Johnson, 256 F.3d 895, 914 (9th Cir.2001) (en banc). However, in Perfumebay.com, we did not "confront" the issue of the applicable standard under the TDRA. Perfumebay.com involved a dilution claim under California state law. See Perfumebay.com, 506 F.3d at 1180 n. 8 ("eBay's dilution claim is made pursuant to Cal. Bus. & Prof.Code § 14330."). We previously had held that California's state dilution law was equivalent to the FTDA. Id. ("eBay's `state law dilution claim is subject to the same analysis as its federal claim.'" (quoting Panavision Int'l, 141 F.3d at 1324)). At the time that Perfumebay.com was decided, the California legislature had not altered its dilution statute to reflect the changes in the newly enacted TDRA.
The same is true of our decision in Jada Toys. Jada Toys had been using the name HOT RIGZ in conjunction with its line of toy trucks; Mattel believed that HOT RIGZ was diluting its HOT WHEELS trademark and therefore sued Jada Toys under state and federal law. Both at the time that Mattel instituted its action in 2004, and at the time the district court granted summary judgment against Mattel in 2005, the FTDA was the governing federal law. Similarly, when the action was briefed to this court, the parties framed their arguments under the FTDA, not the TDRA. Thus we originally decided the case under the FTDA and later amended the opinion in response to the TDRA.
The reason for amending the opinion was to apply the new "likelihood of dilution standard" incorporated into the then recently enacted TDRA. See Jada Toys, 518 F.3d at 634 n. 2. Beyond that change, the amended Jada Toys opinion did not confront any of the other differences between the TDRA and the FTDA. This is unsurprising because the plaintiff-appellant Mattel was entitled to a remand both under Thane's interpretation of the FTDA as well as under the TDRA's multifactor inquiry.
In both Jada Toys opinions, we stated that Mattel had to "show that (1) the mark is famous and distinctive; (2) the defendant is making use of the mark in commerce; (3) the defendant's use began after the mark became famous; and (4) the defendant's use of the mark is likely to cause dilution," changing only the fourth element in the amended opinion to "likely to cause dilution" instead of "dilutes the quality of the mark." Compare Jada Toys, 518 F.3d at 634, with Jada Toys, Inc. v. Mattel, Inc., 496 F.3d 974, 980-81 (9th Cir.2007). We made no change to the statement that:
Compare Jada Toys, 518 F.3d at 634, with Jada Toys, 496 F.3d at 981. Applying Thane's standard, Jada Toys found a triable issue of fact regarding whether HOT WHEELS was "nearly identical" to HOT RIGZ. See Jada Toys, 518 F.3d at 635.
We went on, after finding the marks nearly identical, separately to determine that a reasonable jury could find that HOT RIGZ was likely to dilute Mattel's HOT
As with Perfumebay.com, we do not believe that Jada Toys binds us to apply the "identical or nearly identical" standard for purposes of assessing a dilution by blurring claim under the TDRA. Jada Toys was tried under the FTDA, and the FTDA was the law employed by the parties in their briefing before this court. We resolved the case without any discussion of whether Thane's standard survived the change in law. Indeed, we copied the FTDA analysis of "near identity" into the TDRA opinion without mentioning the material changes in the statute's language regarding similarity. The parties never briefed the applicability of the TDRA or the significance of its revisions to the antidilution law. Nor did the facts of the case require us to confront the possible implications of a less stringent similarity standard. In short, our use of the "identical or nearly identical" standard in Jada Toys cannot represent a definitive resolution of the issue before us "after reasoned consideration," and, therefore, does not establish the standard for dilution under the TDRA.
Finally, the parties have asked us to consider our recent decision in Visa International. In that case, Visa International sued JSL Corporation, which operates eVisa, "a `multilingual education and information business that exists and operates exclusively on the Internet,' at www.evisa. com." Visa Int'l Serv. Ass'n, 610 F.3d 1088. Visa International claimed that eVisa was likely to dilute the Visa trademark. The district court agreed with Visa International and granted summary judgment in its favor. We affirmed. Both parties rely on the same passage of the opinion:
Id. at 1089-90.
In its 28(j) letter submitted on July 1, 2010, Abercrombie sets forth three reasons why "the opinion conclusively establishes the applicability of the `identical or nearly identical' standard under the TDRA." First, Abercrombie notes that Visa International relied on cases that employ the "identical or nearly identical" standard. Second, Abercrombie believes that the "Court's emphasis on the `one mark, two products' paradigm shows that the `identical or nearly identical' standard provides the appropriate legal framework under the TDRA." Third, it continues, "in assessing the similarity between the two marks at issue, the Court applied the identical or nearly identical standard."
We cannot accept Abercrombie's view of Visa International. We believe it clear that our reference to prior cases and our use of the "one mark, two products" paradigm were of little significance to our analysis. Nor can we agree that Visa International "applied the identical or nearly identical standard." In evaluating the district court's judgment in Visa International, we stated that "Congress has enumerated factors courts may use to analyze the likelihood of dilution, including the similarity between the two marks and the distinctiveness and recognition of the plaintiff's mark." Visa Int'l Serv. Ass'n, 610 F.3d 1088, 1089 (emphasis added). We then went on to evaluate the evidence presented according to those statutory standards. With respect to similarity, we observed that "[t]he marks here are effectively identical" with the "only difference" being "the prefix `e.'" Id. at 1090. Our reference to "effectively identical" was a factual assessment of the similarity of the two marks with which we were presented. There simply is no basis for asserting that we required a showing of identity or near identity in evaluating Visa International's claim under the TDRA.
Having reviewed all of the authorities provided by Abercrombie, we conclude
Our method of statutory interpretation is well established:
Children's Hosp. & Health Ctr. v. Belshe, 188 F.3d 1090, 1096 (9th Cir.1999) (parallel citations omitted). Here, moreover, the language of the new statute, when compared to the language of the former statute, provides a firm basis for decision.
Beginning with subsection (c)(1) of 15 U.S.C. § 1125, Congress provided that "the owner of a famous mark . . . shall be entitled to an injunction against another person who . . . commences use of a mark or trade name in commerce that is likely to cause dilution." 15 U.S.C. § 1125(c) (emphasis added). When referring to the junior mark, Congress did not authorize an injunction against another person who commences use of "the" mark; use of the definite article "the" clearly would have signaled that the junior mark had to be the same as the senior. Instead, Congress employed the indefinite article "a," which indicates that any number of unspecified, junior marks may be likely to dilute the senior mark.
Turning to the language of subsection (c)(2)(B), the TDRA defines "dilution by blurring" as the "association arising from the similarity between a mark and a trade name and a famous mark that impairs the distinctiveness of the famous mark." Id. § 1125(c)(2)(B) (emphasis added). Congress did not require an association arising from the "substantial" similarity, "identity" or "near identity" of the two marks. The word chosen by Congress, "similarity," sets forth a less demanding standard than that employed by many courts under the FTDA.
This analysis of the language of the statute, and our comparison of this language with the now-repealed statute, are further supported by Congress's decision to employ, in subsection (c)(2)(B), a non-exhaustive list of relevant factors to determine when dilution has occurred. Congress's implementation of such a methodology is simply not compatible with a determination that identity, near identity or substantial similarity are necessary to constitute a threshold showing for relief under § 1125(c). Indeed, Congress chose instead to make the "degree of similarity between the mark or trade name and the famous mark," id. § 1125(c)(2)(B)(i) (emphasis added), to be the first of the six (or more) relevant factors to be considered.
No doubt, similarity has a special role to play in the implementation of the new statute's multifactor approach. After all, dilution by blurring is defined by the statute as an "association arising from the similarity between a mark . . . and a famous mark." Id. § 1125(c)(1)(B). It is also the first factor listed in the multifactor
Finally, we believe that it is significant that, in adopting the TDRA, Congress decided to re-write 15 U.S.C. § 1125(c), as opposed to altering discrete wording or subsections. This action suggests that Congress did not wish to be tied to the language or interpretation of prior law, but instead crafted a new approach to our consideration of dilution-by-blurring claims.
Thus, the plain language of 15 U.S.C. § 1125(c) does not require that a plaintiff establish that the junior mark is identical, nearly identical or substantially similar to the senior mark in order to obtain injunctive relief. Rather, a plaintiff must show, based on the factors set forth in § 1125(c)(2)(B), including the degree of similarity, that a junior mark is likely to impair the distinctiveness of the famous mark.
Our interpretation of the TDRA is compatible with the case law of the only other court of appeals to have addressed squarely the question whether the requirement of identity or substantial similarity survives the TDRA. In Starbucks, the company brought a federal dilution claim against Wolfe's based on its use of the term "Charbucks" in connection with one of its coffee blends. The district court found that "the marks were not substantially similar" and "that `[t]his dissimilarity alone is sufficient to defeat [Starbucks's] blurring claim.'" Starbucks, 588 F.3d at 107. The Second Circuit disagreed. It acknowledged that, pre-TDRA, it had required plaintiffs to show that the marks were "`very' or `substantially similar'" before they could prevail on a federal dilution claim. Id. (quoting Playtex Prods., Inc. v. Georgia-Pacific Corp., 390 F.3d 158, 167 (2d Cir.2004)). This was no longer the case under the TDRA, the court explained:
Id. at 108. Furthermore, the court continued, in addition to leaving out any modifier for "similarity," Congress also employed specific language that cannot be reconciled with a requirement of substantial similarity; the court stated:
Id. (internal citations omitted); see also Tiffany (NJ) Inc. v. eBay, Inc., 600 F.3d 93, 111 n. 18 (2d Cir.2010) ("We have recently explained that under the [TDRA] the similarity between the famous mark and the allegedly blurring mark need not be `substantial' in order for the dilution by blurring claim to succeed.").
Although we did not speak directly to the issue in Visa International, we believe that our decision in that case is consonant with the interpretation of the TDRA that we adopt here. In Visa International, we reviewed the district court's grant of summary judgment in favor of Visa on its trademark dilution claim. We noted that "likelihood of dilution" is a factual inquiry "generally not appropriate for decision on summary judgment." Visa Int'l, 610 F.3d 1088, 1089. We pointed out that Congress had "enumerated factors courts may use to analyze the likelihood of dilution, including the similarity between the two marks and the distinctiveness and recognition of the plaintiff's mark." Id. (citing 15 U.S.C. § 1125(c)(2)(B)(i), (ii), (iv)). Evaluating these factors, we determined that "[t]he district court was quite right in granting summary judgment to Visa." Id. at 1092. In essence, we considered the evidence in light of the factors set forth in § 1125(c)(2)(B). We identified "similarity" as one of the factors a court should consider and, notably, did not mention a requirement that the marks be "identical or nearly identical." Most importantly, we took the degree of similarity into account along with the other § 1125(c)(2)(B) factors in determining whether dilution was likely to occur. In short, although not addressing the issue now before us head-on in Visa International, we applied the methodology that we have described here and made no reference to a requirement of "identity or near identity" of the marks.
Abercrombie also submits that, even if the district court erred in applying the "identical or nearly identical" requirement, the judgment nonetheless should be affirmed because any error was harmless. According to Abercrombie, the district
Abercrombie presents a very strained view of the district court's opinion. In its order entering judgment for Abercrombie, the court noted that "[t]he advisory jury found that the Ruehl design and the Arcuate mark were not identical or nearly identical." Levi Strauss & Co., 2009 WL 1082175, at *7. It also observed that the test for similarity in a dilution context "is more stringent than in the infringement context." Id. (internal quotation marks omitted). After evaluating the visual depictions of the designs, the court concluded that "[t]his evidence demonstrates that a significant segment of the target group of customers would not view the marks as essentially the same." Id. at *8 (emphasis added). The court then reviewed Dr. Sood's testimony and concluded that, given the survey shortcomings, there was insufficient evidence that target customers would "see the Ruehl design and the Arcuate mark as essentially the same." Id. (emphasis added). In summary, the court stated: "[T]he Court concludes, consistent with the advisory jury's finding, that [Levi Strauss] has not established that [Abercrombie] is making commercial use of a mark that is identical or nearly identical to the Arcuate mark." Id. at *9. Use of the "identical or nearly identical" standard permeated the court's analysis and provided the basis upon which the court evaluated the evidence.
This standard also played a pivotal role in the court's determination that the Ruehl design was not likely to dilute the Arcuate mark. With respect to the similarity of the marks, the court observed that the two marks must be essentially the same and that, "[f]or the reasons set forth above, the Court finds that the Ruehl design and the Arcuate mark are not visually similar." Id. In other words, the court equated similarity with sameness and employed the latter, more stringent definition when entering its findings of fact.
Finally, our review of the district court's balancing of the relevant factors convinces us that application of the incorrect standard affected its dilution determination. According to the district court, degree of similarity was only one of three factors that weighed in Abercrombie's favor. The district court assumed, without deciding, that Levi Strauss also had two factors— acquired distinctiveness and degree of recognition—that weighed in its favor. Thus, application of the correct, less-demanding standard could have tipped the balance in favor of Levi Strauss. The degree of similarity between the Ruehl and Arcuate marks may be insufficient to support a likelihood of dilution, but that conclusion can come only after consideration of the degree of similarity in light of all other relevant factors and cannot be determined conclusively by application of an "essentially the same" threshold.
Given the relative balance of the parties' positions, we cannot say, with any confidence, that the district court would have reached the same result absent the legal error. See Galdamez v. Potter, 415 F.3d 1015, 1025 (9th Cir.2005) ("presum[ing] prejudice where civil trial error is concerned" and shifting the burden to the defendant "to demonstrate that `it is more
REVERSED and REMANDED.
15 U.S.C. § 1125(c)(1) (2005).
Id. at 1324; see also Avery Dennison Corp. v. Sumpton, 189 F.3d 868, 874 (9th Cir. 1999) (same).
