Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co.
631 F. Supp. 735, 228 U.S.P.Q. (BNA) 648, 1985 U.S. Dist. LEXIS 15481 (1985)
Premium Feature
Subscribe to Lexplug to listen to the Case Podcast.
Rule of Law:
Trademark infringement analysis for products with publicly visible marks, such as apparel, must consider the likelihood of post-sale confusion among the general public, not just point-of-sale confusion among immediate purchasers.
Facts:
- Since 1873, Levi Strauss & Co. (Levi) has used a double-curved stitching design (the 'Levi arcuate mark') on the rear pockets of its jeans.
- Levi registered the arcuate mark as a federal trademark, with the first registration issuing in 1943, and the mark is now considered incontestable.
- Since 1972, Levi has sold over 800 million pairs of jeans bearing the arcuate mark and has spent approximately $102 million in advertising that featured the mark.
- Textiles Y. Confecciones Europeas, S.A. (Textiles), a Spanish company, began using a visually similar arcuate design on its 'Lois' brand jeans in Europe in the early 1960s.
- In 1979, Lois Sportswear, U.S.A., Inc. (Lois) began importing and distributing Textiles' Lois brand jeans, featuring the Lois arcuate, in the United States.
- The Lois arcuate consists of two curved arches intercepting at midpoint, closely resembling the Levi mark, and appears in the same location on the rear pocket of the jeans.
- Both Lois and Levi jeans were sold with various permanent and temporary labels identifying their respective brand names, though some Lois models were sold with minimal permanent branding on the rear of the jeans other than the arcuate.
- Generally, Lois jeans were sold in a higher price range ($60-$80) than Levi's jeans ($20-$30), though they sometimes appeared in discount stores at much lower prices.
Procedural Posture:
- In 1979, Levi Strauss & Co. protested to the U.S. Customs Bureau regarding the importation of Lois jeans.
- Between 1980 and 1982, the Customs Bureau issued a series of conflicting rulings, alternately banning and permitting the importation of the jeans.
- Lois Sportswear, U.S.A., Inc. filed a complaint in the U.S. District Court for the Southern District of New York, seeking a declaratory judgment that its mark did not infringe Levi's trademark.
- Levi filed a counterclaim against Lois alleging trademark infringement, unfair competition, and trademark dilution.
- Levi also commenced a separate action against the manufacturer, Textiles Y. Confecciones Europeas, S.A., which was then consolidated with the primary case.
- Lois and Textiles moved for summary judgment to dismiss Levi's claims, and Levi cross-moved for summary judgment on its complaint and counterclaims.
Premium Content
Subscribe to Lexplug to view the complete brief
You're viewing a preview with Rule of Law, Facts, and Procedural Posture
Issue:
Does Lois Sportswear's use of a similar arcuate stitching design on the back pocket of its jeans create a likelihood of confusion with Levi Strauss & Co.'s registered arcuate trademark, thereby constituting trademark infringement?
Opinions:
Majority - Sweet, District Judge
Yes. Lois Sportswear's use of its arcuate stitching design constitutes trademark infringement because it creates a substantial likelihood of confusion with Levi's protected mark, particularly in a post-sale context. The court applied the Second Circuit's multi-factor Polaroid test and found that several factors weighed heavily in Levi's favor. The Levi arcuate is an exceptionally strong, fanciful, and incontestable mark with a century of use and extensive advertising behind it. The Lois mark is visually and fundamentally identical, creating the same overall impression. While other labels might reduce some point-of-sale confusion, they are insufficient to overcome the similarity of a strong mark. Crucially, the court found that post-sale confusion among the general public is actionable. Because jeans are worn in public, the arcuate mark acts as a constant, visible source identifier long after temporary store tags are removed. This public-facing use creates a risk that prospective customers will be confused as to the source or affiliation of the products, thereby diluting the goodwill and advertising value of Levi's famous mark.
Analysis:
This decision is significant for establishing the importance of post-sale confusion in trademark infringement analysis, particularly for apparel and other publicly visible goods. It clarifies that an infringer cannot necessarily avoid liability by adding its own labels at the point of sale if the infringing mark itself is likely to cause confusion among the public who see the product in use. This precedent strengthens protection for owners of strong, iconic trademarks by safeguarding their goodwill and selling power in the broader public sphere, beyond the narrow confines of the retail environment. Future cases involving visible trademarks on products like clothing, cars, or accessories will now more heavily weigh how the public perceives the mark after the initial purchase.
