Case: Abercrombie & Fitch Co. v. Moose Creek, Inc., No. 06-56774 (9th Cir. 5/22/07)

The One Sentence Summary: District court erred in denying Abercrombie & Fitch’s motion for a preliminary injunction against Moose Creek’s use of new marks by (1) misapplying the doctrine of judicial estoppel, and (2) erroneously concluding that the parties’ trademarks were more different than similar.

What They Were Fighting About: Abercrombie & Fitch filed suit in August 2005 against Moose Creek for alleged trademark infringement, unfair competition, and false designation of origin under the Lanham Act and various California common law claims, one year after the parties settled a 2004 trademark infringement suit brought by Moose Creek. In the later action Abercrombie contended that Moose Creek’s two new logos, a moose silhouette and a moose outline, infringed on Abercrombie’s similar marks. Abercrombie moved to enjoin Moose Creek’s use of its new marks pending resolution of the lawsuit. District court denied Abercrombie’s motion because it concluded that (1) a number of Abercrombie’s arguments were contrary to its positions in the prior litigation and therefore barred by judicial estoppel, and (2) differences between the parties’ marks outweighed the similarities.

Ninth Circuit Holdings: The Ninth Circuit reversed and remanded the case to the district court for reconsideration of Abercrombie’s motion for a preliminary injunction, because:

• Applying the Sleekcraft factors regarding likelihood of confusion, the district court abused its discretion in finding that Abercrombie was judicially estopped to assert arguments about the strength of Moose Creek’s marks and the degree of care likely to be exercised by the purchaser.
• The district court also erred in estopping Abercrombie from arguing post-purchase confusion as a ground for trademark infringement.
• Judicial estoppel does not apply where the party’s later litigation position is not “clearly inconsistent” with its earlier litigation position.
• With respect to the third Sleekcraft factor – similarity of the marks – the district court clearly erred in concluding that differences between the parties’ marks outweighed similarities. District court erroneously relied on comparisons to Moose Creek’s marks as they appeared in a catalog, rather than as they appeared embroidered on the company’s apparel in the marketplace. Ninth Circuit noted that “marks must be considered in their entirety and as they appear in the marketplace.”