Filewrapper®

Ninth Circuit: have another look at those two moose - denial of preliminary injunction vacated

May 23, 2007
Post by Blog Staff

In a decision Tuesday, the Ninth Circuit vacated a district court's denial of a preliminary injunction to Abercrombie & Fitch over an alleged infringement of its "Moose" marks by Moose Creek, a competing clothing company.

The Ninth Circuit found that the district court had misapplied several of the factors used in the Ninth Circuit to determine likelihood of confusion, called the Sleekcraft factors, after the case in which they were first listed. Because of this misapplication, the denial of injunction was vacated, but, because the court could not say that Abercrombie & Fitch would necessarily meet the standard for a preliminary injunction, the issue was remanded for redetermination by the lower court.

More details of Abercrombie & Fitch Co. v. Moose Creek, Inc. after the jump.

Abercrombie & Fitch (A&F) and Moose Creek were involved in a trademark dispute in 2004, when Moose Creek sued A&F for infringement of its "silhouette" moose marks. Moose Creek was denied a preliminary injunction in that case, and it eventually settled, with Moose Creek agreeing to stop use of one of its marks.

In 2006, Moose Creek started using two new moose marks, a new silhouette and a new outline mark. A&F sued, alleging trademark infringement and breach of the earlier settlement agreement.

A&F's registered logos are pictured below:

Abercrombie outline logo Abercrombie silhouette logo

(Registration nos. 3212644 and 3220225, respectively). One of the Moose Creek logos is pictured below (at issue is the moose in the center):

Moose Creek logo

In order to obtain a preliminary injunction in a trademark case in the Ninth Circuit, a plaintiff must show:

either (1) a combination of probable success on the merits and the possibility of irreparable injury or (2) the existence of serious questions going to the merits and that the balance of hardships tips sharply in his favor.

Here, there were disputes about several of the Sleekcraft factors used to determine likelihood of confusion (the test for trademark infringement). Those factors are:

(1) strength of the mark; (2) proximity of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) type of goods and the degree of care likely to be exercised by the purchaser; (7) defendant’s intent in selecting the mark; and (8) likelihood of expansion of the product lines.

The lower court held that, based on positions taken by A&F in the earlier litigation, it was judicially estopped from taking contrary positions with regard to four of these factors in this case, specifically factors 1, 5, 6, and 8. Judicial estoppel can prevent a party from taking one position in a first litigation and then taking a contrary position in a later litigation. The Ninth Circuit held that some of the facts were different in this case, and found abuse of discretion in application of judicial estoppel with regard to factors 1 and 6.

In the first litigation, A&F argued that because of the number of moose trademarks, the crowded field prevented Moose Creek's mark from being considered strong, notwithstanding the fact that it was arbitrary for clothing. There, however, the court was looking at mark with either the word "moose" or a depiction of a moose. Here, only a depiction of a moose was at issue, so the field is less crowded. Also, the degree of care in the two cases was different because of the reversal of parties: A&F markets to consumers, whereas Moose Creek markets to professional commercial clothing buyers.

The court also took issue with the lower court's conclusion that the marks had several differences. This was largely because the district court compared "a clean, crisp copy" of A&F's mark to photographs of the Moose Creek mark on clothing. The Ninth Circuit found that many of the differences noted by the district court were not present when the marks were compared as embroidered on the parties' clothing. In addition, there were two similarities not accounted for in the district court's analysis: "swivelled antlers" (although the moose appear in a side view, the antlers appear as if the moose's heads were turned slightly) appear on both marks, and a second diagonal strip appears around the shoulder area of the two outline marks. These similarities convinced the Ninth Circuit that the similarity of the marks in fact favored A&F.

Although the court reversed the lower court's determination on several of the Sleekcraft factors, it did not order the district court to enter a preliminary injunction. Instead, it remanded the case for the district court to consider the issue again, applying the principles and conclusions set out in its opinion. Of course, as a practical matter this could mean a second appeal by whichever party disagrees with the district court's new decision.

To read the full decision in Abercrombie & Fitch Co. v. Moose Creek, Inc., click here.


Post Categories

Comments (0)
Post a Comment



Captcha Image
Return to the Filewrapper Blog

Search Posts

Purpose

The attorneys of McKee, Voorhees & Sease, P.L.C. designed this blog as an informational and educational resource about intellectual property law for our clients, other attorneys, and the public as a whole. Our goal is to provide cutting-edge information about recent developments in intellectual property law, including relevant case law updates, proposed legislation, and intellectual property law in the news.

Disclaimer

McKee, Voorhees & Sease, P.L.C. provides this blog for general informational purposes only. By using this blog, you agree that the information on this blog does not constitute legal or other professional advice and no attorney-client or other relationship is created between you and McKee, Voorhees & Sease, P.L.C. Do not consider this blog to be a substitute for obtaining legal advice from a qualified, licensed attorney. While we try to revise this blog on a regular basis, it may not reflect the most current legal developments. We consciously refrain from expressing opinions on this blog and instead, offer it as a form of information and education, however if there appears an expression of opinion, realize that those views are indicative of the individual and not of the firm as a whole.

Connect with MVS

Enter your name and email address to recieve the latest news and updates from us and our attorneys.

Subscribe to: MVS Newsletter

Subscribe to: Filewrapper® Blog Updates

  I have read and agree to the terms and conditions of McKee, Voorhees & Sease, P.L.C.

Captcha Image