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Yves Saint Laurent Sued for Infringing Levi’s Tab Trademark

At issue in the case of Levi Strauss & Co. v. Yves Saint Laurent America, Inc., recently filed in the Northern District of California, is whether Levi’s trademark rights preclude jean manufacturers from stitching a label onto the vertical seam of the jean’s back pocket.  Levi’s claims that its “Tab Trademark” does in fact prohibit such copying (and seemingly regardless of where the tab is placed).  As shown in side-by-side comparison pictures displayed in the complaint, the Levi’s tab is sewn on the left side of the back-right jean pocket, whereas the Yves Saint Laurent (“YSL”) tab is stitched onto the right side of the back-right jean pocket.  See p. 5 at  https://www.scribd.com/document/393676941/Levi-Strauss-v-Yves-Saint-Laurent.  Nevertheless, and despite the generally large disparity in price points between Levi’s and YSL denim, Levi’s alleges that the YSL tab is likely to confuse consumers about the sources of YSL’s products and/or a relationship between YSL and Levi’s. 

In a constantly evolving market and with millions of dollars in play, Levi’s is no stranger to enforcing its intellectual property rights through litigation.  In fact, Levi’s has consistently bumped heads with jeans manufacturers in the past (approximately 100 lawsuits since 2001), alleging infringement either based on the display of a “tag” stitched to a back pocket, or copying Levi’s signature design (two intersecting arcs stitched into the back pockets).  As the denim giant attempts to prove that it owns a monopoly on tabs stitched onto jean back pockets, one of the ultimate questions will be whether the consuming public views the tag as a source identifier, such that it solely relates to Levi’s. 

When is an invention “on sale?”

The Supreme Court is currently posed with the question: Does the confidential sale of an invention disqualify that invention from later patenting? Helsinn Healthcare S.A. v. Teva Pharm. USA, Inc., 138 S.Ct. 2678 (2018).

The patent statute does not directly address this question, but does state that an invention is precluded from patenting if that invention was “on sale” or “in public use” prior to the filing date for that patent application. Years of case law have added to the meanings of these terms. But now there is an additional term, “or otherwise available to the public.”  35 U.S.C. § 102(a)(1).  Under which circumstances does this new term preclude patenting? Circumstances that are applicable to the certified question for the Court?

The Supreme Court has previously ruled that public use of an invention will not preclude patenting if the public use is for experimentation.  Pfaff v. Wells Elecs., 525 U.S. 55, (1998).  That Court qualified the statutory language, reading in the experimentation use.  But that Court did not rule on the “on sale” criteria except to identify a distinction between experimental use and “products sold commercially.” Is there a similar qualification of a commercial sale, supported by precedent and legislative history, that can exempt a confidential sale from being barred from patenting?

And where would “otherwise available to the public” fit in here? Does “otherwise” mean that the previous items in the list, such as “on sale,” are also to be understood as “available to the public?” Or is it a modern catch-all for new patentability conditions that were not contemplated when the provision was written in 1952?