Forever 21 is not letting the trademark dispute it initiated this summer against Gucci die. After a California federal judge held earlier this month that Forever 21 had not sufficiently made its case as to why an array of Gucci’s trademark registrations for its three-stripe designs should be invalidated, Forever 21 promptly filed an amended complaint, aiming to bolster its allegations.
In addition to reiterating its view that the Gucci trademark registrations at issue (at least nine different trademark registrations for the Italian design house’s blue-red-blue and green-red-green stripe marks) should be cancelled and any pending applications for related marks to be terminated, Forever 21 cites over 100 examples of garments and accessories that make use of similar stripes from various brands.
Given the frequency with which other brands make use of the stripes design and by providing an array of concrete examples, including Louis Vuitton, Balenciaga, Tory Burch, J. Crew and Urban Outfitters, Forever 21 endeavors to show that consumers do not associate Gucci’s striped trademarks with the Italian design house; Gucci’s striped trademarks are essentially incapable of serving as trademarks because they are decorative features and by giving Gucci a monopoly over them that would stifle legitimate competition (aka would prevent others from using these decorative stripe designs); and Gucci’s stripe designs are simply too common or generic to serve as trademarks.
Additionally in its amended complaint, Forever 21 alleges that “Gucci wrongfully claims a monopoly on these common ornamentations on clothing, shoes, bags, and accessories,” and as a result, the court should rule to have them overturned.
According to its filing, “All of the Gucci registrations feature three parallel stripes colored blue-red-blue or green-red-green. Many clothing and accessory items adorned with decorative stripes colored blue-red-blue or green-red-green are sold by countless third parties. Gucci should not be allowed to claim that Gucci, alone, has a monopoly on all blue-red-blue or green-red-green striped clothing and accessory items.”
Forever 21 said in a statement released via its counsel that "Forever 21 believes that Gucci’s efforts to monopolize everyday color combinations will harm consumers and designers, and will continue to fight to ensure that common stripe designs remain available for all. Forever 21 looks forward to continuing to litigate this case to a fair and just result."
A spokesman for Gucci told TFL: “Rather than heed the U.S. District Court’s dismissal and stated skepticism of Forever 21’s baseless claims that Gucci lacks rights in some of its most famous and iconic trademarks, Forever 21 has attempted to bring these claims again."
The spokesman further stated, "The amended complaint is merely a longer version of Forever 21’s spurious first filing and underlines the extent to which Forever 21 will go to persist in its predatory business model, built on consumer deception and confusion. However, it does nothing to deter Gucci from its unwavering commitment to the enforcement and protection of its renowned trademarks and brand identity.”
Forever 21 filed suit against Gucci in June in the U.S. District Court for the Central District of California, asserting that Gucci repeatedly threatened to sue Forever 21 for using an array of its registered trademarks. The fast fashion giant is asking the to declare that its garments are not infringing Gucci’s striped marks, and as a result, Gucci does not have a case for trademark infringement. Moreover, Forever 21's lawsuit calls for the Gucci trademark registrations at issue to be cancelled and any pending applications for related marks to be terminated.