Abercrombie & Fitch v. Moose Creek, Inc. ( 2007 )

FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
ABERCROMBIE & FITCH CO.; 
ABERCROMBIE & FITCH TRADING
CO., No. 06-56774
Plaintiffs-Appellants,
v.  D.C. No.
CV-06-06245-AHM
MOOSE CREEK, INC.; JUNO OF OPINION
CALIFORNIA, L.L.C.,
Defendants-Appellees.

Appeal from the United States District Court
for the Central District of California
A. Howard Matz, District Judge, Presiding
Argued and Submitted
April 17, 2007—Pasadena, California
Filed May 22, 2007
Before: Jerome Farris and Ronald M. Gould, Circuit Judges,
and Kevin Thomas Duffy,* District Judge.
Opinion by Judge Farris
*The Honorable Kevin Thomas Duffy, Senior United States District
Judge for the Southern District of New York, sitting by designation.
5991
ABERCROMBIE & FITCH v. MOOSE CREEK, INC. 5995
COUNSEL
William Bradford Reynolds (argued), John G. Froemming &
Jessica Bradley, Howrey LLP, Washington, DC, Bobby Gha-
jar, Howrey LLP, Los Angeles, California, for the appellants.
Timothy J. Toohey (argued), Daniel C. Tepstein, Hunton &
Williams, LLP, Los Angeles, California, for the appellees.
OPINION
FARRIS, Circuit Judge:
Abercrombie & Fitch Co. interlocutorily appeals the district
court’s denial of Abercrombie’s motion for a preliminary
injunction enjoining Moose Creek, Inc. from using newly
designed moose marks pending the resolution of Abercrom-
bie’s suit alleging trademark infringement and other causes of
action under federal and state law. We have jurisdiction pur-
suant to 28 U.S.C. § 1292(a)(1).
5996 ABERCROMBIE & FITCH v. MOOSE CREEK, INC.
I. BACKGROUND
This is the second time in four years that trademark litiga-
tion between these parties has reached this forum. The first
litigation began in 2004, when Moose Creek filed a trademark
infringement action alleging that Abercrombie’s Silhouette
Moose Logo was confusingly similar to Moose Creek’s
moose marks. Moose Creek sought but was denied a prelimi-
nary injunction against Abercrombie’s use of its logo. See
Moose Creek, Inc. v. Abercrombie & Fitch Co., 331 F. Supp.
2d 1214 (C.D. Cal. 2004). We affirmed. Moose Creek, Inc. v.
Abercrombie & Fitch Co., 114 F. App’x 921 (9th Cir. 2004).
In 2004, during the pendency of the action, Abercrombie
developed and began using a new mark, the Outline Moose
Logo, in addition to its Silhouette Moose Logo. Since then,
Abercrombie has often used these two logos as the only out-
wardly visible indicator of origin on a large share of its
apparel.
The parties settled Moose Creek’s suit in August 2005. The
settlement agreement included provisions that the parties
would retain the rights to use their respective moose marks,
that they would not use each other’s marks, and that Moose
Creek would no longer use its “Moose Creek Polo Moose”
mark or any “colorable imitation thereof.”
In August 2006, Abercrombie became aware of Moose
Creek’s use of two new logos, a moose silhouette and a
moose outline. Abercrombie filed suit against Moose Creek
on September 29, 2006 alleging federal trademark infringe-
ment, unfair competition, and false designation of origin
under the Lanham Act, 15 U.S.C. § 1051 et seq., and trade-
mark infringement, unfair competition, unjust enrichment,
and breach of contract under California common law.
Abercrombie moved to enjoin Moose Creek’s use of its
new marks pending resolution of the action. The district court
ABERCROMBIE & FITCH v. MOOSE CREEK, INC. 5997
found a number of Abercrombie’s arguments to be contrary
to its position in the prior litigation and thus barred by judicial
estoppel. The court also found that the differences between
the parties’ marks outweighed the similarities. Concluding
that Abercrombie had not demonstrated a likelihood of suc-
cess on either its trademark or breach of contract claims, the
district court denied Abercrombie’s motion for a preliminary
injunction.
II. DISCUSSION
We review a district court’s denial of a preliminary injunc-
tion for abuse of discretion. Brookfield Commc’ns, Inc. v. W.
Coast Entm’t Corp., 174 F.3d 1036, 1045 (9th Cir. 1999).
“Under this standard, reversal is appropriate only if the dis-
trict court based its decision on clearly erroneous findings of
fact or erroneous legal principles.” Id. at 1046.
To obtain a preliminary injunction in a trademark case, a
plaintiff must demonstrate “either (1) a combination of proba-
ble success on the merits and the possibility of irreparable
injury or (2) the existence of serious questions going to the
merits and that the balance of hardships tips sharply in his
favor.” Id. Irreparable injury is ordinarily presumed upon a
showing of a likelihood of success. Id. at 1066.
[1] “The core element of trademark infringement is the
likelihood of confusion, i.e., whether the similarity of the
marks is likely to confuse customers about the source of the
products.” Id. at 1053 (internal quotation marks and citations
omitted). In AMF Inc. v. Sleekcraft Boats, we listed eight non-
exclusive factors relevant to determining the likelihood of
confusion between related goods: (1) strength of the mark; (2)
proximity of the goods; (3) similarity of the marks; (4) evi-
dence of actual confusion; (5) marketing channels used; (6)
type of goods and the degree of care likely to be exercised by
the purchaser; (7) defendant’s intent in selecting the mark;
and (8) likelihood of expansion of the product lines. 599 F.2d
5998 ABERCROMBIE & FITCH v. MOOSE CREEK, INC.
341, 348-49 (9th Cir. 1979), abrogation in part on other
grounds recognized by Mattel, Inc. v. Walking Mountain
Prods., 353 F.3d 792, 810 n.19 (9th Cir. 2003).
A. Judicial Estoppel
Abercrombie challenges the district court’s application of
judicial estoppel to Abercrombie’s arguments regarding three
of the Sleekcraft factors and post-purchase confusion. We
review the district court’s application of judicial estoppel for
abuse of discretion. See Hamilton v. State Farm Fire & Cas.
Co., 270 F.3d 778, 782 (9th Cir. 2001).
Several factors typically inform a court’s decision whether
to apply judicial estoppel. First, “a party’s later position must
be ‘clearly inconsistent’ with its earlier position.” New Hamp-
shire v. Maine, 532 U.S. 742, 750 (2001). Second, courts
often inquire whether the party achieved success in the prior
proceeding, as “judicial acceptance of an inconsistent position
in a later proceeding would create ‘the perception that either
the first or the second court was misled.’ ” Id. (quoting
Edwards v. Aetna Life Ins. Co., 690 F.2d 595, 599 (6th Cir.
1982)). Third, courts consider whether, if not estopped, “the
party seeking to assert an inconsistent position would derive
an unfair advantage or impose an unfair detriment on the
other party.” Id. at 751.
1. Strength of the Mark
The district court barred Abercrombie’s arguments regard-
ing the strength of its mark, the first Sleekcraft factor. In the
prior litigation, Abercrombie successfully persuaded the dis-
trict court that Moose Creek’s mark, though arbitrary and thus
presumptively strong, must nonetheless be classified as weak
due to the “crowded field”1 of similar marks. Moose Creek,
1
“In a crowded field of similar marks, each member of the crowd is rel-
atively weak in its ability to prevent use by others in the crowd.” Miss
ABERCROMBIE & FITCH v. MOOSE CREEK, INC. 5999
331 F. Supp. 2d at 1224. The court therefore estopped Aber-
crombie from arguing that the field was not crowded, finding
Abercrombie’s position that “the competitive framework for
the dispute . . . and the competition that exists in the market-
place” had changed to be “entirely different” from its previ-
ous position.
[2] However, the district court failed to recognize that the
relevant “fields” in the two litigations differ in both scope and
size. Previously, when Moose Creek was the senior mark
holder, the field included competitors using both marks
including moose images and marks including the word
“moose.” As Abercrombie is now the senior mark holder,
however, the field includes only competitors whose marks
incorporate moose images. In light of this reduction in scope
of relevant competitors and marks, the corresponding field is
less crowded. Furthermore, Abercrombie presented evidence
that its trademark enforcement had resulted in several compet-
itors abandoning their use of moose images. It was not clearly
inconsistent for Abercrombie to assert that the field is now
less crowded. The district court’s contrary holding and estop-
pel of Abercrombie’s arguments was an abuse of discretion.
2. Marketing Channels Used, Likelihood of Expansion
of the Product Lines
[3] The district court also estopped Abercrombie’s argu-
ments regarding the fifth and eighth Sleekcraft factors, mar-
keting channels used and the likelihood of expansion of the
product lines. Noting Abercrombie’s prior position that it and
Moose Creek focused on different customers, the court
rejected Abercrombie’s attempts to show that Moose Creek
had since expanded its customer base to include end-users.
World (UK) Ltd. v. Mrs. Am. Pageants, Inc., 856 F.2d 1445, 1449 (9th Cir.
1988) (internal quotation marks and citation omitted), abrogation in part
on other grounds recognized by Eclipse Assocs. Ltd. v. Data Gen. Corp.,
894 F.2d 1114, 1116 n.1 (9th Cir. 1990).
6000 ABERCROMBIE & FITCH v. MOOSE CREEK, INC.
[4] Abercrombie presents two pieces of evidence to distin-
guish its position on this issue from the prior litigation:
Moose Creek’s sale of products to J.C. Penny and Moose
Creek’s reorientation of its website as an apparent online store
listing retail rather than wholesale prices. However, J.C.
Penny, like Moose Creek’s other customers, is a retailer, and
at the time of the district court’s decision, Moose Creek’s
website stated that its “Web Store is currently under construc-
tion and for products demo only.” (emphasis added). These
fail to rebut the determination of clear inconsistency. The
application of judicial estoppel on this issue was not an abuse
of discretion.
3. Degree of Care Likely To Be Exercised by the
Purchaser
[5] Abercrombie also appeals the court’s estoppel of Aber-
crombie’s arguments regarding the degree of care likely to be
exercised by the purchaser, part of the sixth Sleekcraft factor.
In the previous litigation, Abercrombie argued that Moose
Creek’s buyers were sophisticated and exercised a high
degree of care, militating against the likelihood of confusion.
Moose Creek, 331 F. Supp. 2d at 1231. On that basis, the dis-
trict court estopped Abercrombie from arguing that the rele-
vant buyers exercise a lesser degree of care. This was an
abuse of discretion.
[6] Different purchasers were relevant to each suit. In the
prior litigation, the relevant purchasers were Moose Creek’s,
who were “professional commercial clothing buyers.” Id. at
1231. Here, the relevant purchasers are not professional buy-
ers, but Abercrombie’s ordinary customers.2 The two groups
2
Abercrombie makes much of the fact that the present litigation is a for-
ward confusion case while Moose Creek’s previous suit was a reverse
confusion case. See Surfvivor Media, Inc. v. Survivor Prods., 406 F.3d
625, 630 (9th Cir. 2005) (“Forward confusion occurs when consumers
believe that goods bearing the junior mark came from, or were sponsored
ABERCROMBIE & FITCH v. MOOSE CREEK, INC. 6001
exercise different levels of care: “when the relevant customers
are professional buyers, they are less likely to be confused
than are ordinary consumers.” Moose Creek, 331 F. Supp. 2d
at 1231. Abercrombie’s positions in the two litigations regard-
ing the degree of care concerned different types of purchasers.
It was error to hold that the two positions were clearly incon-
sistent.
4. Post-Purchase Confusion
[7] The district court also estopped Abercrombie from
arguing post-purchase confusion. While trademark actions
commonly focus on purchaser confusion, post-purchase con-
fusion — confusion “on the part of someone other than the
purchaser” — may also ground a trademark infringement
claim under the Lanham Act. See Karl Storz Endoscopy-Am.,
Inc. v. Surgical Techs., Inc., 285 F.3d 848, 854 (9th Cir.
2002). It may also come into play in analyzing certain Sleek-
craft factors. See Au-Tomotive Gold, Inc. v. Volkswagen of
Am., Inc., 457 F.3d 1062, 1076-79 (9th Cir. 2006).
The district court described the doctrine in terms of pur-
chasers: “once people have purchased these competing prod-
ucts, although from different sources, from different channels,
and under different circumstances, they are going to put them
by, the senior mark holder. . . . By contrast, reverse confusion occurs when
consumers dealing with the senior mark holder believe that they are doing
business with the junior one.”). However, the more critical point — what
party’s purchasers are relevant for this factor — follows the same rule in
both types of suits. Compare Matrix Motor Co. v. Toyota Jidosha
Kabushiki Kaisha, 290 F. Supp. 2d 1083, 1095 (C.D. Cal. 2003) (“In a
reverse confusion case, the degree of care exercised by customers is deter-
mined with reference to the alleged senior user’s customers only.” (inter-
nal quotation marks and citation omitted)), with M2 Software, Inc. v.
Madacy Entm’t, 421 F.3d 1073, 1084-85 (9th Cir. 2005) (analyzing degree
of care with regard to senior mark holder’s consumers in forward confu-
sion case). Thus, the more significant change here is the shift in which
party is the senior user.
6002 ABERCROMBIE & FITCH v. MOOSE CREEK, INC.
in the same drawer and hang them on the same shelf and fail
to distinguish between them.” The court’s later correction —
that it meant not initial purchasers but “the ultimate wearers”
— did not sufficiently expand the court’s focus, as it contin-
ued to exclude those who “simply see[ ] the item after it has
been purchased.” Karl Storz, 285 F.3d at 854.
[8] In addition to reliance on this legal error, the district
court abused its discretion by estopping Abercrombie’s argu-
ments on this issue since neither Moose Creek nor Abercrom-
bie raised it in the prior litigation. The court’s determination
that Abercrombie’s assertion of post-purchase confusion dif-
fered from its former position that the parties have different
marketing channels was improper. See Levi Strauss & Co. v.
Blue Bell, Inc., 632 F.2d 817, 822 (9th Cir. 1980); Payless
Shoesource, Inc. v. Reebok Int’l Ltd., 998 F.2d 985, 989-90
(Fed. Cir. 1993) (finding marketing channels immaterial to
post-purchase confusion).
B. Non-estopped Sleekcraft Factors
1. Similarity of the Marks
Abercrombie challenges the district court’s conclusion with
regard to the third Sleekcraft factor that “the differences . . .
outweigh the similarities” as to both the parties’ silhouette
and outline marks. “[T]he district court’s findings on similar-
ity of the marks must be upheld unless clearly erroneous.”
Sleekcraft, 599 F.2d at 351.
The district court identified five distinguishing characteris-
tics between Moose Creek’s and Abercrombie’s silhouette
marks: (1) Moose Creek’s mark “is a lot less defined”; (2)
Moose Creek’s mark has “white horizontal dividers or mark-
ers on the legs separating the torso from the legs” missing
from Abercrombie’s mark; (3) Abercrombie’s “silhouette is a
much cleaner, much more realistic, much less fanciful, . . .
much more anatomically authentic depiction of a moose than
ABERCROMBIE & FITCH v. MOOSE CREEK, INC. 6003
is Moose Creek’s silhouette”; (4) Moose Creek’s mark has “a
smudge . . . on the body toward the rear haunches and above
the right leg that’s absent in the Abercrombie silhouette”; and
(5) “very, very importantly, the front legs are crossed in the
Moose Creek silhouette” but not Abercrombie’s mark.
All but the last of these observations apply only to the ver-
sion of Moose Creek’s silhouette mark printed on the mast-
head of its Spring 2007 catalog. However, “marks must be
considered in their entirety and as they appear in the market-
place.” Official Airline Guides, Inc. v. Goss, 6 F.3d 1385,
1392 (9th Cir. 1993). The crucial object of comparison is not
Moose Creek’s mark as it appears on an ephemeral catalog,
but rather as it appears embroidered on a substantial portion
of the company’s apparel.3 The embroidered version of the
mark lacks the first four distinguishing characteristics relied
upon by the district court.
Similar errors influenced the district court’s decision
regarding the parties’ outline marks. Again, the district court
identified several differences, including the better definition
of Abercrombie’s mark, the crossed front legs of Moose
Creek’s mark, and that while “[t]he head of the moose for
Abercrombie is better defined and, for example, you can see
the eye, . . . one can’t distinguish where the eye would be on
the Moose Creek outline.”
[9] But again, all but one of the differences are a product
of the differing quality of the examples the court examined.
Although the only available renditions of Moose Creek’s out-
line mark in the record were photographs of the mark as it
appeared on Moose Creek’s apparel, the district court appar-
ently chose to compare these depictions to a clean, crisp copy
of Abercrombie’s outline mark. However, when the marks of
both parties are instead viewed “as they appear in the market-
3
Photographs of apparel featuring the mark so embroidered appeared
prominently throughout Moose Creek’s catalog.
6004 ABERCROMBIE & FITCH v. MOOSE CREEK, INC.
place” — that is, when the marks of both parties are compared
as they appear embroidered on their respective apparel — any
semblance of difference in precision vanishes. The better defi-
nition of the head of Abercrombie’s mark also disappears
when the marks are compared in this fashion. Instead, both
appear to have an eye, neither of which is delineated in any
detail.
[10] The sole remaining difference is the crossed front legs
of Moose Creek’s marks. Though it distinguishes them from
Abercrombie’s marks, the crossed legs are also a significant
departure from the “three-legged” left-facing silhouette previ-
ously used by Moose Creek. Unlike this prior mark, Moose
Creek’s new marks have a visible space between the legs
above their crossing point, intensifying rather than reducing
the similarity with Abercrombie’s marks. Overall, the crossed
front legs are a “trivial distinction[ ]” with no effect on our
observation that “[w]ith a single glance at the two images, one
is immediately struck by their similarity.” GoTo.com, Inc. v.
Walt Disney Co., 202 F.3d 1199, 1206 (9th Cir. 2000).
[11] The similarities between the marks are striking. Both
sets of marks face left, are realistic monochromatic silhou-
ettes, and share near-identical proportions. Both are used as
the only outward indication of origin for certain apparel. Of
particular moment is that Moose Creek’s marks share the dis-
tinctive “swivelled antlers” feature of Abercrombie’s marks.4
Moose Creek’s outline mark also shares an additional unique
feature of Abercrombie’s mark — “the second diagonal strip
in the lower part of the neck near the shoulders,” a line
devised by the creator of Abercrombie’s outline mark because
although unrealistic, he thought it looked good. In light of the
principle that “similarities are weighed more heavily than dif-
4
Abercrombie’s mark is unique in that its perspective of the moose is
inconsistent: while the moose’s head is viewed directly from the side, the
antlers are a “3/4 view,” as if they had been swivelled on the moose’s
head.
ABERCROMBIE & FITCH v. MOOSE CREEK, INC. 6005
ferences,” id., our comparison of Abercrombie’s and Moose
Creek’s marks leaves us “with a definite and firm conviction
that [the district court’s] conclusion is incorrect.” Sleekcraft,
599 F.2d at 352. The district court’s finding that the marks
were more different than similar was clearly erroneous.
2. Defendant’s Intent in Selecting the Mark
[12] Abercrombie argues that the district court erred by
failing to seriously consider Moose Creek’s intent in redesign-
ing its moose marks, the seventh Sleekcraft factor. “When the
alleged infringer knowingly adopts a mark similar to anoth-
er’s, reviewing courts presume that the defendant can accom-
plish his purpose: that is, that the public will be deceived.”
Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th
Cir. 2002) (internal quotation marks and citations omitted).
According to Abercrombie, Moose Creek’s use of the swiv-
elled antlers and the second diagonal line evince an intent to
deceive.
[13] The district court acknowledged the suspicion aroused
by Moose Creek’s adoption of the second diagonal line on the
outline mark, saying that it “may reflect a negative or invidi-
ous . . . intent on Moose Creek’s part,” but the court did not
pursue the matter further. This was not an abuse of discretion.
This is not a case where a would-be competitor adopts a mark
virtually identical to that of a well-known mark without any
record of similar prior usage. Moose Creek has been using
moose-related marks since 1989, and the district court’s
apparent conclusion that the similarity between Moose
Creek’s new variations and Abercrombie’s marks did not sup-
port a finding of intent to deceive was not clearly erroneous.
C. Preliminary Injunction
[14] The district court’s errors affected three of the Sleek-
craft factors — including one of the three most important, see
GoTo.com, 202 F.3d at 1205 — and post-purchase confusion.
6006 ABERCROMBIE & FITCH v. MOOSE CREEK, INC.
The court’s denial of Abercrombie’s motion for a preliminary
injunction must be vacated. See Payless Shoesource, Inc. v.
Reebok Int’l Ltd., 998 F.2d 985, 991 (Fed. Cir. 1993) (vacat-
ing and remanding for reconsideration a district court’s denial
of preliminary injunction in part because of “[t]he district
court[’s] erroneous focus solely on pre-sale confusion fac-
tors”); Pyrodyne Corp. v. Pyrotechnics Corp., 847 F.2d 1398,
1403 (9th Cir. 1988) (reversing denial of preliminary injunc-
tion as based on erroneous legal standard).
[15] However, we cannot conclude from the record that
Abercrombie will necessarily be able to show a probability of
success on its trademark infringement claim once the errors
we have identified are corrected. We therefore decline to
order the district court to grant the preliminary injunction and
instead remand for further proceedings. Cf. Pyrodyne, 847
F.2d at 1403 (remanding for reconsideration using the correct
legal standard).
D. Breach of Contract
Abercrombie also appeals the district court’s denial of a
preliminary injunction on breach of contract grounds. Accord-
ing to Abercrombie, Moose Creek’s new logos represent a
colorable imitation of the Moose Creek Polo Moose that
Moose Creek was contractually barred from using under the
parties’ prior settlement agreement. The district court held
that Abercrombie had not shown a likelihood of success on
the claim.
[16] A “colorable imitation” is “any mark which so resem-
bles a registered mark as to be likely to cause confusion or
mistake or to deceive.” 15 U.S.C. § 1127. Careful inspection
is required to distinguish a colorable imitation from the genu-
ine, in contrast to situations “when ordinary attention by the
purchaser of the article would enable him at once to discrimi-
nate the one from the other.” McLean v. Fleming, 96 U.S.
245, 255 (1877).
ABERCROMBIE & FITCH v. MOOSE CREEK, INC. 6007
[17] The district court’s denial of a preliminary injunction
on these grounds was not an abuse of discretion. Although
some of the court’s factual findings were a product of the
court’s reliance on the masthead version of Moose Creek’s
mark, other findings and additional differences bolster the
court’s conclusion. The configuration of the front legs, the
head, and the antlers of the respective marks differ, as the
court recognized. Moose Creek’s new mark is monochro-
matic, while the Polo Moose used two colors, giving it a
three-dimensional appearance. Based on these differences,
“ordinary attention” would enable a purchaser “at once to dis-
criminate the one from the other.” Id.III. CONCLUSION
The district court’s denial of Abercrombie’s motion for pre-
liminary injunction is VACATED and the case is
REMANDED for reconsideration.