Gucci noted that Forever 21 has admitted its entire argument for the cancellation of trademarks — covering different styles and fabrications of Gucci’s stripes, or “webbing” — rests on limited claims that stripes in red, green and blue are used too widely for legal protection. The luxury brand contended the fast-fashion retailer is incapable of bringing that claim up to the required legal standard.
“At most, it argues that its ‘claims rest on the simple factual predicate that clothing with the striped pattern at issue are commonly available,’” Gucci said in its filing. “Even this is an overstatement of the complaint, because Forever 21’s allegations do not actually address the particular Gucci America webbing marks ‘at issue’ in this case. A complaint without even a single factual allegation addressed to the particular trademarks at issue, and that fails to identify the alleged third-party users or describe their allegedly similar products, must, on its face, be dismissed.”
Even if Forever 21’s claims were legally plausible, Gucci said there is nothing offered to support them.
“The two sentences of the complaint that Forever 21 has now conceded form the sole basis for all three of its claims for cancellation offer none of the factual predicates necessary to establish the that webbing marks lack secondary meaning, are aesthetically functional, or are generic,” Gucci said.
The brand went on to argue that “Forever 21’s characterization of its allegations as ‘facts’ does not entitle them to a presumption of truth.”
With that, Gucci asked the court to immediately dismiss Forever 21’s call for cancellation of current and pending trademarks covering Gucci’s stripe designs.
Gucci’s stripes have long been incorporated into the brand and the first design was registered in 1963. It’s been featured heavily in recent collections under the leadership of creative director Alessandro Michele on bags and accessories, dresses, jackets and suiting, among other items.
After being put on notice last week of Gucci’s intent to file its dismissal motion, after it filed a number of counterclaims, Forever 21 defended its lawsuit as having “sufficient facts” and rejected the argument that it lacked standing to seek cancellation of the trademarks, since Gucci has demanded that it stop selling certain striped clothing.
The issue of dismissal is set to be considered in court later this month, but even if this part of the litigation is resolved, the rest of the litigation looks acrimonious enough to make a full trial necessary. The court is prepared for that outcome and last week set down a preliminary schedule for discovery throughout this year and most of next, culminating and a trial set to begin December 2018.
For More, See: