Abercrombie & Fitch v. American Eagle Outfitters

• Decision Date: 15 February 2002
• Docket Number: No. 99-4240.,99-4240.
• Citation: 280 F.3d 619
• Parties: ABERCROMBIE & FITCH STORES, INC., Plaintiff-Appellant, v. AMERICAN EAGLE OUTFITTERS, INC., Defendant-Appellee.
• Court: U.S. Court of Appeals — Sixth Circuit

280 F.3d 619

ABERCROMBIE & FITCH STORES, INC., Plaintiff-Appellant, v. AMERICAN EAGLE OUTFITTERS, INC., Defendant-Appellee.

No. 99-4240.

United States Court of Appeals, Sixth Circuit.

Argued December 7, 2000.

Decided and Filed February 15, 2002.

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

Melvin D. Weinstein (briefed), Kegler, Brown, Hill & Ritter, Columbus, Ohio, Frank J. Colucci (argued and briefed), Colucci & Umans, New York, New York, for Plaintiff-Appellant.

Robert G. Sugarman (argued and briefed), Lynda M. Braun (briefed), Weil, Gotshal & Manges, New York, New York, Joel Robert Chambers, Wood, Herron & Evans, Cincinnati, OH, for Defendant-Appellee.

Before JONES, BOGGS, and SILER, Circuit Judges.

OPINION

BOGGS, Circuit Judge.

This case pits an old hand at trademark law against the new kid on the block: Abercrombie & Fitch sued American Eagle Outfitters to stop American Eagle from infringing what A & F describes as its unregistered "trade dress," made protectable by Section 43(a) of the Lanham Act. A & F claimed that AE impermissibly copied the designs of certain articles of clothing, in-store advertising displays, and a catalog. The district court granted summary judgment in favor of American Eagle, reasoning that Abercrombie & Fitch had sought protection for something that did not constitute trade dress at all. Abercrombie timely appealed. Today "we relieve A & F of some of its unhappiness but not of all." Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 7 (2d Cir.1976). We affirm the judgment of the district court, albeit for different reasons: the clothing designs A & F seeks a monopoly on are functional as a matter of law, and therefore not protectable as trade dress; the A & F Quarterly constitutes non-functional distinctive trade dress, but the American Eagle catalog is not confusingly similar to it, as a matter of law.

I

Abercrombie & Fitch Stores, Inc. ("Abercrombie" or "A & F") describes itself as a "retailer of men's and women's casual clothing, such as t-shirts, outerwear, sweatshirts, woven shirts, sweaters, jeans, khakis, shorts, baseball caps, belts, socks, and other accessories ... designed primarily to appeal to young men and women of college age." It sells its products nationwide through 157 retail stores and a mail-order catalog under the registered trademarks and service marks ABERCROMBIE & FITCH, A & F CO, A & F, and variations thereof. Founded in 1892, Abercrombie was acquired by The Limited, Inc., in 1988. Since then, it has enjoyed a remarkable rejuvenation of its brand, selling in excess of $1.4 billion in merchandise (through June 1998) and expending more than $26 million on marketing its brand, including advertisements in national and fashion magazines.

A & F identifies an "Abercrombie brand" as having "unique and inherently distinctive features" and refers to such as its trade dress. This trade dress, Abercrombie claims, comprises nine features:

1) Use of the Abercrombie marks, in particular the A & F trademark in Universe Bold Condensed typeface.

2) Use of the word performance on labels and advertising and promotional material to convey the image of an active line of casual clothing.

3) Use of such words and phrases as authentic, genuine brand, trademark, and since 1892 on labels and advertising and promotional material to convey the reliability of the Abercrombie brand.

4) Use of the word outdoor on labels and advertising and promotional materials to convey the image of a rugged outdoor line of casual clothing.

5) Use of design logos, such as the ski patrol cross and lacrosse sticks, and product names for the types of clothing, such as "field jersey," to convey the image of an athletic line of casual clothing.

6) Use of primary color combinations, such as red, blue, grey, tan, and green in connection with solid, plaid, and stripe designs, to create a consistent design and color palette.

7) Use of all natural cotton, wool, and twill fabrics to create a consistent texture palette.

8) The creation of a cutting edge "cool" image through photographs and advertising and promotional material, such as the A & F Quarterly (the "catalog" or "Quarterly"). The Quarterly presents the Abercrombie brand and trade dress in a unique manner: namely, it features the Abercrombie brand and trade dress in a "cutout" or "clothesline" style and uses color bars to illustrate the available colors of the item, while combining a consistent conceptual theme with a lifestyle editorial content of music, electronics, books, and magazine features. The catalog is printed on cougar vellum paper, which is unique for a catalog.

9) The creation of a consistent merchandise look in A & F stores through the use of in-store signage and display setups and through the use of the "Abercrombie sales associate team," which is comprised primarily of college students. See Compl. ¶ 7.

American Eagle Outfitters, Inc. ("American Eagle" or "American"), sells essentially the same variety of clothing and products in its 300 stores nationwide, under the trademarks and service marks AMERICAN EAGLE OUTFITTERS and AE, and generates approximately $300 million in annual sales. American has been a retailer since at least 1994, although many of its products describe the company's vintage as 1977. Abercrombie accuses American of capitalizing on the former's success in the market by selling confusingly similar products and marketing them in a way confusingly similar to Abercrombie's image. A & F asserts that its premiere issue of the Quarterly, the Fall 1997 issue, was copied by American Eagle, whose own catalog featured the same products (such as shirts, jeans, sweatshirts, boxer shorts, sweater vests, jackets, and pajamas), containing the same colors, having the same designs, being made from the same fabrics, and bearing the same product names (e.g., "vintage" sweatshirts and "field jerseys"). A & F also claims that the paper, page layouts, lifestyle editorial content, manner of displaying merchandise, and typeface in American's catalog are identical or confusingly similar to the Quarterly. Abercrombie introduced a memorandum from American marketing executives directing American store managers to inspect the windows, lead table, and leaseline signs of Abercrombie stores every week and report on A & F's presentation. ("Attention store manager-We need you to tell us what Abercrombie & Fitch is marketing!!!").¹ During litigation in the district court, American declined to contest the allegation that it intentionally copied the various aspects of Abercrombie's claimed trade dress enumerated in the complaint.

On June 2, 1998, Abercrombie filed suit in the district court claiming that American infringed upon its unregistered trade dress, in violation of § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), the Ohio common law of trade dress protection and unfair competition, and the Ohio Deceptive Trade Practices Act, O.R.C. § 4165.01 et seq.² American served its Answer on August 3, 1998, and simultaneously filed its motion for summary judgment. On November 30, 1998, the district court granted in part American's motion to stay discovery: the court ruled that discovery on the issue of American's intentional copying was inappropriate during the pendency of American's summary judgment motion because American had admitted intentional copying for purposes of the motion, but the court permitted discovery on the question of use of similar designs and marketing approaches by third-party retailers, which issue American raised in its motion.

On July 12, 1999, the district court granted American's motion for summary judgment in its entirety. The court recognized that unregistered trade dress protection can extend to "the image and overall appearance of the product." The court described trade dress as 1) either a singular feature or combination of features that takes on a distinct arrangement, 2) intended by the maker to permit the public to identify it as coming from a particular source, and 3) having a tendency to do so. The court noted that trade dress is protectable under either of two circumstances: the dress is inherently distinctive or has acquired secondary meaning. The district court assumed, for purposes of the motion, that Abercrombie's arrangement of words, colors, and format had acquired secondary meaning, but reasoned that the motion turned on the question of whether the elements described in Abercrombie's complaint constituted trade dress at all. According to the district court, trade dress protection is not available when a) the means of dressing the product is functional or descriptive, or b) the claimed trade dress amounts to an abstract image or marketing approach.

The court concluded that, regardless of any public identification of the claimed trade dress with Abercrombie, "it is simply too descriptive and generic to qualify for Lanham Act protection." The court remarked, "retailers must be free to use common verbal or pictorial descriptions of their goods ... [including] such matters as showing the clothing in `cutout' fashion ... using combinations of standard colors ... universally-recognized patterns ... and common fabrics ... in clothing design and manufacture.... All of these factors are both generic and descriptive...."

The Court recognize[d] that a combination of generic or descriptive elements can sometimes create a unique look that is protectable, but there is nothing arbitrary or fanciful, or in any way distinctive, about the combination of these elements in a clothing catalog that would make the whole of the "Abercrombie Brand," at least as it relates to the descriptive language, color combinations, and cutout style, something more than the sum of its non-protectable parts. That observation applies equally to the use of words claiming that the clothing is "authentic" and the use of A & F's own trademark....

The court lastly...