Seattle Trademark Lawyer

On May 22, the Ninth Circuit vacated the Central District of California’s denial of Abercrombie & Fitch Co.’s motion for preliminary injunction against Moose Creek, Inc. At issue is the allegedly confusing similarity between the parties’ moose logos used in connection with their competing lines of apparel.

This is the parties’ second trip to the Ninth Circuit. In the first case, Moose Creek sued Abercrombie over a different set of moose logos. During the pendency of that suit, Abercrombie developed a new moose logo. Thereafter, Moose Creek developed two new moose logos of its own. The parties’ new moose logos are at issue in the present case (two of which are depicted below). 

Abercrombie’s and Moose Creek’s (inset) logos

In the first suit, Abercrombie persuaded the district court that Moose Creek’s mark must be classified as weak due to the “crowded field” of similar marks. Therefore, the district court estopped Abercrombie from arguing the field was not crowded in the second litigation. The Ninth Circuit disagreed, finding “the district court failed to recognize that the relevant ‘fields’ in the two litigations differ in both scope and size. Previously, when Moose Creek was the senior mark holder, the field included competitors using both marks including moose images and marks including the word ‘moose.’ As Abercrombie is now the senior mark holder, however, the field includes only competitors whose marks incorporate moose images. In light of this reduction in scope of relevant competitors and marks, the corresponding field is less crowded.” The Ninth Circuit found the district court’s contrary holding and estoppel of Abercrombie’s arguments constituted an abuse of discretion.

The Ninth Circuit also found the district court erred in estopping Abercrombie’s arguments regarding the degree of care likely to be exercised by the purchaser. In the previous litigation, Abercrombie argued that Moose Creek’s buyers were sophisticated and exercised a high degree of care. On that basis, the district court estopped Abercrombie from arguing the relevant purchasers exercise a lesser degree of care. Yet, “[d]ifferent purchasers were relevant to each suit. In the prior litigation, the relevant purchasers were Moose Creek’s, who were ‘professional commercial clothing buyers.’ Here, the relevant purchasers are not professional buyers, but Abercrombie’s ordinary customers,” who are likely to exercise less care. Therefore, the Ninth Circuit found it was error to hold the two positions were clearly inconsistent.

The Ninth Circuit then found fault with the district court’s decision to estop Abercrombie from arguing post-purchase confusion. “The district court described the doctrine in terms of purchasers: ‘once people have purchased these competing products, though from different sources, from different channels, and under different circumstances, they are going to put them in the same drawer and hang them on the same shelf and fail to distinguish between them.’ The court’s later correction — that it meant not identical purchasers but ‘the ultimate wearers’ — did not sufficiently expand the court’s focus, as it continued to exclude those who ‘simply see [ ] the item after it has been purchased.’”

“In addition to reliance on this legal error, the district court abused its discretion by estopping Abercrombie’s arguments on this issue since neither Moose Creek nor Abercrombie raised it in the prior litigation.” The Ninth Circuit found: “The court’s determination that Abercrombie’s assertion of post-purchase confusion differed from its former position that the parties have different marketing channels was improper.”

The Ninth Circuit then found error in the district court’s conclusion that the marks were more different than similar. It found: “The similarities between the marks are striking. Both sets of marks face left, are realistic monochromatic silhouettes, and share near-identical proportions. Both are used as the only outward indication of origin or certain apparel. Of particular moment is that Moose Creek’s marks share the distinctive ‘swivelled antlers’ feature of Abercrombie’s marks. Moose Creek’s outline mark also shares an additional unique feature of Abercrombie’s mark — ‘the second diagonal strip in the lower part of the neck near the shoulders,’ a line devised by the creator of Abercrombie’s outline mark because although unrealistic, he thought it looked good.”

“In light of the principle that ‘similarities are weighed more heavily than differences,’” the Ninth Circuit found the comparison of the marks left it “‘with a definite and firm conviction that [the district court’s] conclusion is incorrect.”

The Ninth Circuit remanded rather than reversed because it could not conclude from the record that Abercrombie will necessarily be able to show a probability of success on its infringement action once the district court corrects its errors.

The case cite is Abercrombie & Fitch Co. v. Moose Creek, Inc., No. 06-56774, 2007 WL 1469667 (9th Cir.).