Here is a question: how long will it be until this $40 dress leads to a lawsuit? Gucci is fresh from a confidential settlement with Forever 21, which filed a strongly-worded lawsuit against Gucci after the Italian design house threatened to file suit against it for offering up for sale and actually selling a wide array of garments and accessories bearing its trademark-protected red and green stripe. With that case out of the way, you might wonder whether one specific dress on Target’s website, one with a distinctive green-red-green waistband, will ultimately lead to something of a similar lawsuit.
As those who followed the Forever 21 v. Gucci lawsuit will know, Gucci’s trademark, which “consists of a stripe containing three distinct bands of color with a red band in the middle of two green bands,” is a particularly interesting and contentious one. Gucci has used the trademark-protected stripe on garments, including “shorts, pants, jeans, leggings, shirts, sweaters, sweatshirts, dresses, skirts, and swimwear,” among others, according to its U.S. trademark registration, since 1967, making it one of the 98-year old brand’s most famous (and arguably, widely-recognized) assets.
While Gucci America has maintained a registration for the green-red-green stripe since 2013, at least some brands have called foul, contesting the validity of the mark. Forever 21, for instance, alleged in the since-settled declaratory judgment action it filed against Gucci in June 2017 that "Gucci should not be allowed to claim that Gucci, alone, has a monopoly on all green-red-green striped clothing and accessory items."
Framing its case as an attempt to put a stop to “Gucci’s efforts to monopolize everyday color combinations, [which] harm consumers and … to ensure that common stripe designs remain available for all,” the fast fashion giant asked a federal court in Los Angeles to declare that it was not infringing Gucci’s rights by using a lookalike stripe on its own products. It also sought to have at least 5 of Gucci trademark registrations for the green-red-green stipe cancelled and any pending applications for related marks terminated.
Gucci responded to Forever 21’s claims by declaring that the fast fashion giant – “brazenly” masquerading as a “victim of unfair competition in search of legal redress in the courts” – was “bringing suit to cancel some of the most famous marks in the fashion world” and all the while, was the one “profiting handsomely by flaunting the law.”
Despite pushback from Gucci, in February 2018, Judge Fernando M. Olguin of the U.S. District Court for the Central District of California held that "Forever 21’s trademark cancellation and non-infringement claims are viable" and should be decided at trial. The case would settle – out of court and before trial – 6 months later.
No such suit has been filed by either Gucci (on trademark infringement and/or counterfeiting grounds) or Target (seeking court intervention in response to (hypothetical) cease and desist letters from Gucci’s counsel), but that does not mean that one is not in the making.