Court denies dismissal of J. Barbour & Sons from Levi's trademark suit

By Charmaine Little | Mar 28, 2019

SAN FRANCISCO – The U.S. District Court in the Northern District of California has denied a defendant's motion to dismiss a suit against it filed by Levi Strauss & Co. over allegations of trademark infringement.

J. Barbour & Sons LTD filed a motion to dismiss itself from the case for a lack of personal jurisdiction, stating that it’s based in the United Kingdom and that its U.S. subsidiary, Barbour Inc., should be left as the only defendant. The court wasn’t persuaded by this argument and denied the motion March 11.

“Given the uncontested allegations and undisputed evidence that Barbour & Sons designs the allegedly infringing articles, is in charge of worldwide marketing for the infringing articles, owns the U.S. trademarks for the infringing articles, and owns and maintains the U.S.-facing website through which United States consumers can locate stores in this district where they can purchase the infringing articles, specific jurisdiction over Barbour & Sons has been established,” U.S. District Judge William H. Orrick wrote.

Levi alleged that J. Barbour & Sons committed an intentional act and the ruling noted that J. Barbour & Sons didn’t deny its design and manufacture of the products that were said to be an infringement on Levi’s trademarks. Plus, J. Barbour & Sons also didn’t deny that it has ownership and operation of its website that points out spots in California where consumers can buy its products. 

“Those are intentional acts; the intentional act prong is satisfied,” Orrick wrote.

The ruling noted J. Barbour & Sons’ activities were also aimed in California considering it created, designed and sold items that are available in California and even promoted its products to residents in the state. 

“Barbour & Sons must have known that [Levi] owned the Tab trademark and was located in San Francisco,” Orrick wrote.

While there was a concern over whether J. Barbour & Sons’ website was passive, the company couldn’t deny that it actually does operate the website and subsequently knew about the flag that is said to be an infringement. It also was aware the flag would be sold in California.

“I conclude that Barbour & Sons’ website is more than merely passive and shows that Barbour & Sons knew that its products – albeit ones sold to the retailers through Barbour Inc. – were being sold in California and that its efforts promoted those California sales,” Orrick wrote.

J. Barbour & Sons attempted to argue that New York would be a more fitting district for the suit, but the court insisted that it has the most-effective and easiest venue.

According to the ruling, Levi sent Barbour & Sons a cease-and-desist letter in 2018 regarding similarities between the Levi Tab and the Barbour Flag. Levi alleged the similarities would cause confusion between consumers and asked Barbour to completely stop using the flag. Levi gave Barbour & Sons 10 days to respond. 

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