Gucci Designs Famous Trademarks?
By: LORA M. FRIEDEMANN
A federal judge in Manhattan recently awarded Gucci $4.7 million on its trademark claims against Guess, Gucci America, Inc. v. Guess?, Inc., et al., Case No. 09-cv-4373-SAS-JLC (May 21, 2012). In the three year legal battle, Gucci claimed that Guess infringed and diluted five Gucci design marks. The court found these three Gucci design marks famous:
The first is a red and green stripe design, the second a repeating “GG” pattern, and the third, identified in the opinion as “Diamond Motif Trade Dress,” consists of the GG pattern “on canvas in a brown/beige colorway, with pinpoint ‘shading’ within the Gs.”
Although these marks may be familiar to fashionistas, they are far from household names (or in this case, household patterns). Indeed, the evidence the court relied upon to find the marks famous is sparse. Gucci presented sales and advertising revenues for products bearing the designs. Although Gucci’s sales revenues are impressive, the remaining evidence Gucci presented was far less so. For the red and green stripe mark, Gucci spent $3.7 million in advertising from 2001 to 2009. For the GG pattern and Diamond Motif Trade Dress, Gucci spent $13 million over the same period. That adds up to a little more than $2 million per year. The advertisements probably also displayed the GUCCI word mark, but the opinion does not indicate how the GUCCI word mark appeared.
In addition to sales revenues and advertising expenditures, the court considered trademark registrations and admissions by Guess witnesses. Gucci has registrations for the red and green stripe mark and the repeating GG pattern. The Diamond Motif Trade Dress is not registered.
At trial, Guess witnesses acknowledged that the design marks are “key identifiers” for the Gucci brand. While that may be true, a mark must be “widely recognized by the general consuming public of the United States” to qualify as a famous mark under the Trademark Dilution Revision Act. In this author’s view, the evidence supporting the court’s finding of fame falls short of the strict standard established in the TDRA.
The press characterized the judgment as a win for Gucci, but was it really? Gucci convinced the judge to find its design marks and trade dress famous, but the ultimate outcome is a little like finding gum on the bottom of your stiletto. Guess stopped using the marks the court found diluted and infringed before trial. The court rejected Gucci’s claims on other designs and awarded Gucci a small fraction of the damages Gucci was seeking.
At the close of the 116 page opinion, the judge expressed hope that the parties would pursue future disputes on “the runway and shopping floor, rather than spilling over into the courts.”