Of Trademarks and Really Expensive Bowling Shoes

Submitted by patentadmin on Thu, 06/14/2012 - 17:35

Gucci won a trademark infringement lawsuit against Guess? Inc., but the payout was much smaller than Gucci anticipated. Gucci America, Inc v. Guess?, Inc.
(SDNY 2012)

The basis of the suit: Gucci accused Guess of infringing five of its trademarks as embodied in some of the ugliest shoes ever to walk the earth. (You can view them here...if you dare.)

Both Gucci's shoes and Guess's knockoffs are reminiscent of Gucci's famous purses, where this writer opines that the design is used much more successfully. Gucci claimed that five trademarked design elements were infringed and/or diluted: The green-red-green stripe; a repeating "GG" pattern with intertwined G's; the use of a diamond pattern with the "GG" design; a stylized G; and a script mark with the brand name. The Guess? shoes incorporated a version of all five trademarks, and Gucci anticipated $120 million in damages.

However, in the final decision, Gucci was only awarded $4.648 million. What went wrong?

We won't go too deep into an analysis of the infringement/dilution (in part because it's complicated; in part because it would necessitate spending more time looking at these shoes), but the judge found the stripe pattern to be a "basic" fashion design; the stylized "G" to be a weak mark; and the "script" mark did not cause confusion because each company's mark spelled a different brand name.

Gucci's case was also weakened by the fact that it was found to have treated Guess? differently from other alleged infringers. Said the judge: “Over the years, Gucci has sent out hundreds of cease and desists letters to entities ranging from national companies such as Bebe, Juicy Couture, and Williams-Sonoma, all the way to small-time infringers, such as a counterfeiter working out of her Los Angeles apartment and a rabbi in New York, who they suspected might sell counterfeit Gucci products to benefit his synagogue.”

In the present case, however, Gucci was aware of the alleged infringement by Guess? for several years but took no action, not even a "cease and desist" letter. Thus Gucci's claims of being unaware of the potential infringement were less than credible. And for the final nail in this case's coffin, Gucci failed to present evidence of actual damages.

The judge seems to share our opinion about the attractiveness of the infringed product, writing that Oscar Wilde “aptly called [fashion] ‘a form of ugliness so intolerable that we have to alter it every six months.’ With the instant disputes now resolved … it is my hope that this ugliness will be limited to the runway and shopping floor, rather than spilling into the courts.”

We hope so too. But if Gucci is still interested in finding infringers to sue, they might find similar shoes as close as the nearest bowling alley.

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