Trademark Law: Abercrombie & Fitch 052207

Abercrombie & Fitch v. Moose Creek, 9th U.S. Circuit Court of Appeals, No. 06-56774 (May 22, 2007):

Issue:
Once upon a time, Moose Creek (MC) sued Abercrombie & Fitch (AF) about AF's use of moose logos. In this litigation, AF argued that the field of moose-themed marks was crowded, the companies had different marketing channels, and the professional buyers at issue in the litigation exercise a great deal of care in their selections. MC settled with AF, agreeing to greatly restrict its use of moose-indicia. Shortly thereafter, AF learned that MC was marketing its brand with moose-image marks. Now, AF sued MC. The court liberally applied estoppel against many of AF's argued Sleekcraft factors. Because of arguments in the prior litigation, the court estopped AF from arguing that the field was not crowded, that the channels used by MC had expanded to include AF's channels, and that the consumers don't exercise a great deal of caution. Further, the court would not consider post-purchaser confusion as an argument. Finally, the court found that the two marks were sufficiently dissimilar, and it denied AF a preliminary injunction against MC. AF appealed from the interlocutory order.

Pertinent issues of trademark law:
1) Should the judge automatically have estopped AF from arguing differently on the Sleekcraft factors than it argued in the recent litigation?
2) Since the issue of post-purchase confusion was not brought up in the prior litigation, was it proper for the judge to estop discussion of the issue in the current litigation?
3) How dissimilar can two moose silhouettes be?

Conclusion:
The two litigations had different demographics at their focus and took place at different times. Since the issue in the current litigation was end-purchasers, not professional purchasers, the court should have allowed AF to argue that the degree of caution exercised by end-users was not the same as the prior litigation and that MC's sales channels over the last few years have evolved to include AF's channels. Further, arguments on post-purchase confusion should have, thus, been allowed, since the court had framed its understanding of post-purchase confusion in terms of purchasers and not ultimate wearers. Indeed, said the appeals court, even the marks at play are different in this litigation than the last; in the last litigation, all moose-themed marks was a crowded field, but in this litigation the issue is only moose-image marks. (Silhouettes, in particular.) The scope of the field was far reduced. Last, the appeals court found that the lower court had compared the similarity of the two marks by comparing one mark as it was in one kind of use (embroidered), and the other as it appeared in another (catalog). This, said the court, was improper, as the two marks were very similar when compared on even terms. Both were left-facing, realistic silhouettes of moose used as the unaccompanied and single identifying mark on apparel. While the appeals court was unwilling to rule that the preliminary injunction should have been granted, it was willing to vacate the denial of such and send the case back for further proceedings.