Details at Gucci RTW Spring 2018

Gucci has temporarily beat back an effort by Forever 21 to free up the use of trademarked stripe designs.

A California federal judge late Monday sided with Gucci and dismissed Forever 21’s June effort to invalidate an array of trademarks covering the luxury house’s blue and red as well as green and red stripe designs, finding it to be poorly supported.

After pointing to some contradictory citations of relevant trademark law, the judge said plainly: “The court is skeptical that plaintiff has sufficiently alleged facts to support its claims for cancellation based on lack of secondary meaning, aesthetic functionality and genericism.”

“Moreover, the court questions whether plaintiff has standing to seek cancellation of registrations that defendant has not accused plaintiff of infringing,” the judge added.

Forever 21 launched the suit as a preemptive move against Gucci, claiming it had been warned on its use of stripe details on a number of apparel items and accessories, but no formal accusations of infringement had yet been lobbed.

Examples offered by Gucci of apparel with allegedly trademarked striped features (left side) and Forever 21’s purported copies. 

The chain argued that the stripe marks at issue are simply too common and “among the most favorite, popular and widely used colors and design features on clothing,” meaning trademark protection should not be allowed.

Despite the court noting multiple deficiencies with these claims, Forever 21 was granted leave to amend its complaint, and will have until Nov. 17 to improve on its allegations and offer more support.

“Plaintiff is cautioned that failure to timely file a first amended complaint may result in this action being dismissed without prejudice for failure to prosecute and/or failure to comply with a court order,” the judge said.

If Forever 21 pursues an amendment, Gucci will be required to also refile a motion to dismiss by Dec. 4.

A Gucci spokesman said the company is “pleased” that Forever 21’s “spurious claims” have been dismissed.

“This is an important step in Gucci’s continuing commitment to the protection of its renowned and iconic intellectual property,” the spokesman said.

Representatives for Forever 21 could not be immediately reached for comment.

When Gucci pushed back in August against the chain’s effort to undermine its trademarks, the house said it’s “committed as ever to protecting its long-established intellectual property rights,” adding that its goal is to end “once and for all Forever 21’s reprehensible exploitation” of Gucci’s designs.

Forever 21 has faced more than its share of infringement allegations, but it’s attempted to justify its move against Gucci by saying the company is taking its ownership of stripes too far.

Gucci’s stripes, referred to by the company as “webbing,” have long been incorporated into the brand and the first of now 14 protected designs was registered in 1963. The design element has seen a resurgence at the brand under the leadership of creative director Alessandro Michele, being used on bags, shoes, dresses, jackets and even suiting.

After responding to Forever 21’s initial allegations and filing counterclaims of infringement, dilution and unfair competition, Gucci pushed for the outright dismissal of the allegations and the cancellation effort, arguing the complaint simply didn’t meet the required legal standard.

The Gucci spokesman added that the company “looks forward” to continuing its pursuit of counterclaims against Forever 21.

While the case looks headed for another round of dismissal motions, it’s obviously contentious and the judge is prepared to hold a full trial, which, if needed, would begin late next year.

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