778 F.2d 1352 (9th Cir. 1985), 82-4684, Levi Strauss & Co. v. Blue Bell, Inc.

Docket Nº:82-4684.
Citation:778 F.2d 1352
Party Name:228 U.S.P.Q. 346 LEVI STRAUSS & CO., a Delaware corporation, Plaintiff-Appellant, v. BLUE BELL, INC., a Delaware corporation, Defendant-Appellee.
Case Date:December 13, 1985
Court:United States Courts of Appeals, Court of Appeals for the Ninth Circuit

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778 F.2d 1352 (9th Cir. 1985)

228 U.S.P.Q. 346

LEVI STRAUSS & CO., a Delaware corporation, Plaintiff-Appellant,


BLUE BELL, INC., a Delaware corporation, Defendant-Appellee.

No. 82-4684.

United States Court of Appeals, Ninth Circuit

December 13, 1985

Argued and Submitted En Banc Sept. 12, 1984.

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M. Laurence Popofsky, Heller, Ehrman, White & McAuliffe, San Francisco, Cal., for plaintiff-appellant.

Donald Kaul, Brownstein, Zeidman & Schomer, Washington, D.C., for defendant-appellee.

Appeal from the United States District Court for the Northern District of California.


MERRILL, Circuit Judge:

Levi Strauss & Co. has brought this action against Blue Bell, Inc., seeking damages and injunctive relief for federal trademark infringement, 15 U.S.C. Sec. 1114 (1982), and false designation of origin, 15 U.S.C. Sec. 1125(a) (1982), 1 and, under California

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state law, for trademark infringement, unfair competition and trademark dilution. The claimed trademark is for a pocket tab, which Strauss describes as a folded cloth ribbon sewn in the vertical seam of a "garment patch pocket." Blue Bell is alleged to have violated Strauss's trademark rights by using a horizontal tab, bearing the word "Wrangler" or "Maverick," on the pockets of its shirts.


The pocket tab trademark was adopted and put to use by Strauss on September 1, 1936, and on May 10, 1938, registration was granted by the Patent and Trademark Office. The mark was described as "a small marker or tab of textile material or the like, colored red...." The goods in connection with which it was used were stated to be "overalls of the patch pocket type." In subsequent years other tabs in other colors, some bearing the "Levi's" name, have been registered for use on jackets and "garments, particularly trousers."

In 1969 Strauss began using a pocket tab on shirts. An application for registration of a shirt tab bearing the Levi's name has been filed. Blue Bell has filed opposition to that application, and proceedings have been suspended pending the outcome of this litigation. A shirt tab was registered by Strauss under California state law on June 12, 1974. Commencing around 1975, Blue Bell began marketing a shirt bearing a "Wrangler" or "Maverick" label imprinted on a tab consisting of a folded cloth ribbon affixed to the seam of a shirt pocket. It is this use of a shirt pocket tab by Blue Bell that is the subject of this action.

In order to prevail on its federal claims, Strauss must establish both (1) that it has a protected interest (or trademark right) in the pocket tab allegedly infringed by Blue Bell's shirt usages and (2) that Blue Bell's shirt usages are likely to cause consumer confusion and thus infringe upon that interest. See, e.g., Levi Strauss & Co. v. Blue Bell, Inc., 632 F.2d 817, 820-22 (9th Cir.1980) (Blue Bell I ).

Strauss cannot simply rely on the federal registration of certain tabs, most notably of those on pants, to establish a protected interest in a pocket tab on garments generally, because registration constitutes prima facie evidence of a protected interest with respect to the goods specified in the registration only. 15 U.S.C. Sec. 1115. 2 Further, Strauss has not alleged that the tab mark is "inherently distinctive." See 1 J. McCarthy, Trademarks and Unfair Competition, Secs. 11:1-2 at 433-36 (2d ed. 1984) (hereinafter J. McCarthy). In order to establish the first element of its cause of action, namely a protected interest, Strauss has, therefore, relied upon the doctrine of secondary meaning.

Secondary meaning is another way of expressing the distinctiveness of a trademark. Blue Bell I, 632 F.2d at 820. In this circuit, " '[s]econdary meaning has been defined as association, nothing more.' " Id. at 820, quoting Carter-Wallace, Inc. v. Proctor & Gamble Co., 434 F.2d 794, 802 (9th Cir.1970). The basic element of secondary meaning is, thus, the mental association by a substantial segment of consumers and potential consumers "between the alleged mark and a single source of the product." 1 J. McCarthy, Secs. 15:2 at 659, and 15:11(B) at 686. See Blue Bell I, 632 F.2d at 820.

After a bench trial, the district court found that the Strauss tab as applied to the shirt market did not possess secondary meaning and, moreover, that even if the tab as used on shirts was assumed to possess secondary meaning, Blue Bell's use of its tab on shirts was not likely to cause

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customer confusion. 3 The district court consequently ruled in favor of Blue Bell with respect to both Strauss's federal trademark and state law claims. We affirm the district court as to Strauss's federal trademark and state unfair competition claims, but we remand for further consideration of Strauss's state trademark infringement and dilution claims.


The parties agree that a de novo standard of review is appropriate for the district court's rulings on matters of law. They also agree that the question of secondary meaning is one of fact which is reviewed under the "clearly erroneous" standard. Blue Bell I, 632 F.2d at 821. They differ, however, as to what standard is appropriate for our review of the trial court's decision that there was no likelihood of confusion. Strauss urges a de novo review, while Blue Bell argues for the clearly erroneous standard. We hold that henceforth the clearly erroneous standard should be applied in reviewing a trial court's determination concerning likelihood of confusion. 4

In United States v. McConney, 728 F.2d 1195 (9th Cir.) (en banc), cert. denied, --- U.S. ----, 105 S.Ct. 101, 83 L.Ed.2d 46 (1984), this court stated that where a mixed question of law and fact is predominantly one of fact, we review the trial court's determination under the clearly erroneous standard. 728 F.2d at 1203-04. The issue of likelihood of confusion is a mixed question which appears to be predominantly factual in nature.

Likelihood of confusion is the type of mixed question which fits within the categories suggested in McConney as suited to clearly erroneous review--cases not implicating constitutional rights and those "in which the applicable legal standard provides for a strictly factual test, such as state of mind." Id. at 1203. De novo review of this issue would demand a significant diversion of appellate court resources to a task which more properly belongs to the district court judge. See id. at 1201 & n. 7. See also Miss Universe, Inc. v. Flesher, 605 F.2d 1130, 1133 (9th Cir.1979).

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Moreover, the limited precedential value of likelihood of confusion decisions, each of which stands upon its own facts, reduces the need for de novo review. McConney, 728 F.2d at 1201. See Matter of McLinn, 739 F.2d 1395, 1401 (9th Cir.1984) (en banc).

Whether confusion is likely is a factual determination woven into the law. We routinely treat the issue as one of fact in a variety of procedural contexts. 5 For the sake of accuracy, uniformity, and consistency with the predominant view in other circuits, 6 we will hereafter review findings of likelihood of confusion under the clearly erroneous standard.


In Blue Bell I, an earlier lawsuit brought by Strauss over Blue Bell's use of a tab on the right rear pocket of its pants, this court determined that Strauss's pocket tab had acquired secondary meaning in the pants market. See 632 F.2d at 821. Under the doctrine of collateral estoppel, the Strauss pant pocket tab continues to possess secondary meaning. See, e.g., Parklane Hosiery Co. v. Shore, 439 U.S. 322, 326 n. 5, 99 S.Ct. 645, 649 n. 5, 58 L.Ed.2d 552 (1979). Indeed, the district court explicitly recognized that the pant pocket tab possessed strong secondary meaning.

Strauss argues, however, that Blue Bell I established that Strauss has (through secondary meaning) a trademark right in a pocket tab on all garments. We cannot agree. Secondary meaning in the pant tab does not necessarily inhere in the shirt tab since the pant tab was registered as a location specific mark. See 15 U.S.C. Sec. 1057(b); In re Levi Strauss & Co., 165 U.S.P.Q. 348, 350 (TTAB 1970). More important, we do not regard the Blue Bell I litigation as an appropriate basis for collateral estoppel in any area other than the pants market.

In the first place, it is clear that this court in Blue Bell I had no intention of deciding the questions of secondary meaning and likelihood of confusion in any area other than the pants market.

Our ultimate conclusion was:

Strauss has established that a substantial number of prospective buyers associate its pocket tab trademark with only one seller of pants, and that Wrangler's use of a projecting label with its ends captured in an edge of rear patch pocket

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of its pants is likely to cause confusion, to cause mistake, or to deceive. 7

632 F.2d at 822 (emphasis added).

Footnote 7 of Blue Bell I makes the point clear beyond dispute: "The parties have argued toward general definitions of Strauss's trademark rights under various hypothetical circumstances. Such definitions must await presentation of an actual case or controversy involving established facts." Id.

Under the doctrine of collateral estoppel, judgment in a prior suit between parties precludes relitigation by the parties of issues actually litigated and necessary to the outcome of the first action. Parklane, 439 U.S. at 326 n. 5, 99 S.Ct. at 649 n. 5; Clark v. Watchie, 513 F.2d 994, 998 (9th Cir.), cert. denied, 423 U.S. 841, 96 S.Ct. 72, 46 L.Ed.2d 60 (1975). See 1B Moore's Federal Practice p 0.441, at 722 (1984). Similarity between issues does not suffice; collateral...

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