## Facts

- Levi Strauss & Co. applied to register a mark consisting of an unlettered orange tab protruding from a structural seam of a shoe on the Principal Register.
- Levi filed the application on September 5, 1975, claiming first use on April 15, 1975, and sought registration under Lanham Act § 2(f) based on acquired distinctiveness.
- The examining attorney initially refused registration, viewing the tab as ornamental and not source-indicating; Levi submitted evidence emphasizing use and promotion of tab devices on its jeans and asserted limited shoe use (including test markets).
- The examining attorney maintained the refusal, noting Levi lacked five years of substantially exclusive and continuous use on shoes to invoke the § 2(f) prima facie showing.
- The application was published, and Genesco opposed, submitting extensive evidence of third-party use of tabs or similar protruding devices on footwear.
- Genesco moved for summary judgment before the TTAB; Levi responded largely with an unsworn memorandum asserting factual disputes.
- The TTAB accepted Genesco’s rebuttal affidavits, denied Levi’s effort to strike them, and granted summary judgment sustaining the opposition, finding third-party tab use so extensive that Levi could not show secondary meaning for shoes.
- Levi appealed the TTAB decision to the Federal Circuit.

## Issues

1. Whether Levi’s unlettered orange tab on a shoe seam had acquired distinctiveness (secondary meaning) for shoes under Lanham Act § 2(f) despite extensive third-party use of similar tab devices on footwear.
2. Whether the TTAB properly granted summary judgment to Genesco, including whether Levi raised a genuine issue of material fact and whether the TTAB properly considered Genesco’s affidavit evidence.

## Decision

- The Federal Circuit affirmed the TTAB’s decision sustaining Genesco’s opposition and refusing registration.
- The court agreed that the record of widespread third-party tab use on footwear precluded a finding that Levi’s shoe tab had acquired distinctiveness under § 2(f).
- The court held summary judgment was proper because Genesco made a strong evidentiary showing of non-distinctiveness and Levi failed to submit competent evidence creating a genuine issue of material fact.
- The court upheld the TTAB’s procedural handling of Genesco’s rebuttal affidavits and found no basis to disturb the Board’s disposition.

## Legal Principles

- Registration under Lanham Act § 2(f) requires proof that the proposed mark has become distinctive of the applicant’s goods; five years of substantially exclusive and continuous use may provide prima facie evidence, but lack of exclusivity can defeat the claim.
- Extensive third-party use of similar design features on the same category of goods can negate or foreclose a showing of secondary meaning because consumers are less likely to associate the feature with a single source.
- Reputation or consumer recognition of a similar feature on different products does not, without more, establish acquired distinctiveness for the feature as applied to the specific goods at issue.
- In TTAB proceedings, summary judgment is appropriate when the movant’s evidence shows no genuine dispute of material fact and the nonmovant responds with argument or unsworn assertions rather than admissible evidence contradicting the material showing.

## Conclusion

The Federal Circuit affirmed denial of registration for Levi’s unlettered orange shoe-tab mark, holding that pervasive third-party use of similar tab devices on footwear defeated Levi’s § 2(f) claim of acquired distinctiveness and that summary judgment was proper because Levi did not produce competent evidence creating a genuine dispute of material fact.


Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401 (Fed. Cir. 1984)