Gucci and Forever 21 are at odds in a legal war over use of the Italian fashion house’s recognizable green-red-and-green and blue-red-and-blue striping designs on clothing the fast-fashion retailer is offering for sale in its stores and on its website.
According to the Fashion Law blog, Forever 21—which is no stranger to accusations of being a copycat and borrowing other people’s designs—was served multiple cease and desist letters by Gucci beginning in December 2016. Gucci demanded that the retailer immediately stop selling any garments or accessories that bore Gucci’s federally trademarked green-red-and-green or blue-red-and-blue striping patterns. Gucci has had trademark registrations on those striping patterns going back as far as 1988.
Forever 21 responded in June 2017 by filing a lawsuit in the U.S. District Court for the Central District of California, arguing:
Many clothing and accessory items adorned with decorative stripes colored blue-red-blue or green-red-green are sold by countless third parties. ... The colors red, blue, and green, and stripe designs, are among the most favorite, popular and widely used colors and design features on clothing.
The company contended:
Gucci should not be allowed to claim that Gucci, alone, has a monopoly on all blue-red-blue and green-red-green striped clothing and accessory items” and stated “Consumers are not likely to be confused into believing the Striped Products sold in Forever 21’s stores by Forever 21 are manufactured by, sponsored by, authorized by, or otherwise associated or affiliated with Gucci.
Forever 21 asked the court to cancel the at least nine different trademark registrations Gucci has over the patterns, terminate any pending applications for trademarks on the patterns and quash any potential trademark-infringement claims Gucci has against Forever 21.
On Friday, Judge Fernando M. Olguin sided with Forever 21, stating, “Forever 21’s trademark cancellation non-infringement claims are viable” and should be decided at trial.
The judge also rejected Gucci’s request to dismiss Forever 21’s trademark-cancellation claim, arguing that when consumers see those striping patterns, they do not automatically associate then with Gucci.
Laura Chapman, an attorney with Sheppard Mullin who is representing Forever 21 in the case, said in a statement to TFL Tuesday, “Forever 21 feels very strongly that Gucci improperly sought trademark registrations for these popular designs in a wrongful effort to monopolize them, and that these designs should be freely available for use by anyone.”
She added that the case highlights more than 100 examples of other brands using that type of striping pattern, including Louis Vuitton, Versace, Valentino, St. John, Tommy Hilfiger, Adidas, Gap and J.Crew, among many others.
“Forever 21 believes Gucci’s trademark registrations and applications should be cancelled by the court and looks forward to continuing to litigate this case to a fair and just result,” Chapman said.
A spokesman for Gucci said, “In an effort to distract from its own blatant infringements, Forever 21 is attempting to attack some of Gucci’s most famous and iconic trademarks. This will not deter Gucci from pursuing its own claims against Forever 21 as part of its ongoing commitment to the vigorous protection of its valuable intellectual property rights and distinctive brand identity.”
Gucci is an iconic brand with many years in the game, and putting aside what the judge in the case has said, I think we can all agree that Gucci’s striping pattern is recognizable as being theirs and have been for many years.
That said, I would agree that someone going into Forever 21 knows good and damn well that they aren’t buying anything Gucci in a store with prices that low, and there would be no confusion about whether or not Gucci made the garments and accessories.
There is, however, something to be said for brand recognition. Even customers shopping in Forever 21 would agree that those stripes look like Gucci’s; they just also know they aren’t buying Gucci in Forever 21.