Levi’s Secures a Partial Win in Green Tab Trademark Lawsuit

One trademark tyrant just secured a partial win in its latest legal battle.

On March 1, a California court issued an update on the ongoing skirmish between Levi Strauss & Co. and David Connolly, who owns Green Tab Clothing in Australia. The two have been duking it out over trademark infringement, unfair competition and market dilution at the demand of the red-tab purveyor.

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The two main trademarks at issue are the Arcuate trademark, a stitching pattern used on the back pocket of Levi’s jeans, and Levi Strauss’ Tab trademarks, which it calls the “Tab Mark Family” in the legal proceedings, arguing that, “LS&Co.’s use of and rights in the Tab trademark are protected in every color.”

According to court documents, “LS&Co. claims that Connolly infringes LS&Co.’s Tab and Arcuate trademarks by using the Green Tab word mark to brand and promote his retail operations and services, and manufacturing, marketing and selling products bearing copies of the Arcuate trademark and marks within the Tab Mark Family.”

Levi’s filed a motion for summary judgment, which is a tool used to resolve cases that have an obvious answer and thus do not need to go to trial, on each of the accusations it brought against Connolly after the court dismissed Connolly’s motion to dismiss the case altogether.

Judge Virginia K. DiMarche granted Levi Strauss’ motion on some charges it put forth against Connolly, but denied the motion in every other instance. Thus, each of the other charges will proceed and may eventually make it to trial.

Where Levi’s won

DiMarche ruled that Green Tab infringed on Levi’s Orange Tab and Silvertab trademarks, granting Levi Strauss’ motion for summary judgment on liability for federal trademark infringement. Subsequently, the judge also granted Levi Strauss’ motion for summary judgment on its federal unfair competition claim as related to the Orange Tab and Silvertab marks.

Those rulings came as a result of a legal principle called the Sleekcraft factors, which courts use to “analyze likelihood of confusion” between products in trademark disputes. Sleekcraft factors include considerations like the strength of the mark in question, proximity of the goods and services sold, evidence of actual confusion and more.

At one time, Connolly filed a word mark trademark request for Green Tab, but Levi’s filed a suspension request in response, prior to filing this lawsuit. According to the U.S. Patent and Trademark Office, that word mark is now inactive.

Despite the San Francisco mogul’s partial win, other pieces of the case will continue to move forward.

One trademark win, more trademark flops

The court denied Levi Strauss’ motion for summary judgment on liability for federal trademark infringement for the Arcuate trademark.

Connolly said that may be because he showed differences exist between his stitching patterns and the Stony Creek Colors investor’s Arcuate stitching.

“I exhaustively covered the issue of Arcuate stitching in court, and it appears the judge agrees that the stitching is not what Levi Strauss & Co. allege,” Connolly told Sourcing Journal. “I read their stitching definition out in court and not even the color was a match.”

The judge noted that difference in her denial of Levi Strauss’ motion.

“There appears to be no dispute that the parties’ respective stitching designs may be similar, but not identical,” she wrote. “While Connolly’s deemed admissions and other evidence regarding [his] business may tend to support a finding of likelihood of confusion under the Sleekcraft factors…nothing in those admissions conclusively establishes that his stitching design is confusingly similar to the Arcuate trademark.”

The judge also denied Levi Strauss’ motion for summary judgment on its federal trademark infringement claim with respect to its Red Tab trademark.

According to the judge, that’s because “LS&Co.’s Red Tab registration does not concern goods, but rather services” like customer loyalty programs promotional and advertising purposes.

Because DiMarche denied a number of the summary judgment motions on infringement, she also denied a motion for summary judgment on dilution, noting that the company had not provided enough analysis to prove that dilution had occurred as a result of the alleged infringement.

Moreover, the judge noted that the court would continue to address the trademark issues at stake over Connolly’s recycling program. Green Tab offers a recycling service to brands and retailers specifically aimed at denim. Connolly has also been working on commercializing performance technologies on cotton to improve sustainability and eliminate non-organic materials from the denim supply chain.

According to the judge, “LS&Co. Has not demonstrated that it is entitled to summary judgment of infringement with respect to any Tab mark or any mark within the Tab Mark Family based on Connolly’s denim recycling services… Although LS&Co. Says that it has, ‘environmental initiatives and product lines that reflect its commitment to sustainability,’ nothing in the record presented demonstrates that LS&Co. offers denim recycling services or that it has any plans to do so.”

Levi Strauss & Co. did not return Sourcing Journal’s request for comment.