Turns out Levi Strauss is not a bully.
That’s according to a federal judge who dismissed a case accusing the apparel company of being a trademark bully.
Last year, Levi Strauss & Co. sent British-based clothing company J. Barbour & Sons a cease and desist letter, saying it was infringing on its trademark tabs. The item in question was the “Barbour Flag,” a small piece of fabric bearing the Barbour name, usually attached to the seam of a pocket on shirts and pants. Levi’s said Barbour’s tabs look a lot like its trademark pocket tabs.
But the luxury apparel company fought back, calling the San Francisco-based denim maker a “trademark bully” and filed a motion seeking declaratory relief, or an official declaration from the courts saying that Levi’s cease and desist letter had no legal grounds. A Manhattan judge dismissed Barbour’s case this week.
The original issue started in May 2018 when Levi’s contacted Barbour over the Barbour Flag.
The British-based company, known for its waxed-cotton jackets, called Levi’s request to cease and desist, as well as turn over financial information regarding apparel with the flags, “a classic example of severe overreaching by a company that has the dubious distinction of being one of the world’s biggest trademark ‘bullies,'” according to court documents.
Barbour said apparel with the Barbour Flag have been featured in the company’s catalogue since as early as 2001 and said no “reasonable and prudent consumer” would ever think Barbour’s apparel is somehow affiliated with Levi’s.
“In fact, to [Barbour’s] knowledge, in all of the years that Barbour-branded products have been sold in the U.S. — or anywhere in the world, for that matter — there has never been a single instance where a consumer or potential consumer has expressed any such confusion between Barbour products and those offered by Levi Strauss & Co.,” the court documents state.
Consumer brand recognition is an important element in determining trademark infringement.
Barbour went on to call Levi’s “one of the most litigious apparel companies in the United States, if not the world. It has a well-deserved reputation as a trademark ‘bully,’ having filed more than 300 trademark lawsuits since 1989,” the June 2018 court documents state. Levi’s has a “well-documented history of suing hundreds of companies and individuals in numerous federal district courts across the land.”
Then Levi’s filed a motion to dismiss the Barbour lawsuit the following month.
Levi’s first used a folded piece of cloth as a tab on the back of its pants as early as 1936, registering it as a trademark in 1949. In the interim, the 164-year-old retailer has sued nearly everyone in the fashion industry, including Diesel, YSL, The Limited, Vineyard Vines, Guess, Bugle Boy, Benetton, Ann Taylor, Stussy, Forever 21, Ralph Lauren, and Dolce & Gabbana.
In addition to suing over the tab, the clothing company has sued over the double-arch stitching on the back pocket of its jeans and even the placement of the patch on the back of the jeans that reads “Levi Strauss Originals” and features images of men on horses.
But suing over trademarked goods is hardly a crime — it’s actually part of the trademark process. The alternative is a company losing its trademark rights.
In fact, Ryan Fox, an associate intellectual property lawyer at brand protection law firm Sideman & Bancroft, said companies are required by law to police their trademarks. If they don’t they’re setting up a precedence for other companies to infringe upon the trademark.
“Trademarks function so that consumers can recognize a producer by a shorthand, either their name or logo,” Fox said. “That way [consumers] don’t have to continually do research to the essential product that they’re buying.”
The latest court order leaves the door open for Levi’s to continue its litigation against Barbour for trademark infringement.
Barbour could not be reached for comment.