Image: Telfar

Guess is garnering attention online for copying and pasting the design of Telfar’s cult-favored – and almost always sold-out – Shopping Bag. The remarkable similarity between Telfar’s 7-year-old shopping bag design, and the newly-released Guess tote has prompted social media users to call foul and question whether litigation may be in the cards. While the copycat conflict is currently limited to social media disclosure, it is not entirely impossible to envision Telfar making a trademark infringement argument in connection with the combination of the two double-straps design and the specific placement of the circular logo on the side of the bag – the elements that Guess has hijacked – on the basis that consumers have come to associate the Telfar bag design with a single source, and therefore, are likely to be confused by Guess’ lookalike version.

Before showing a likelihood that consumers may be confused about the source of the Guess bag and/or whether Telfar is in some way affiliated with or potentially, collaborated with Guess when that is not the case, Brooklyn, New York-based Telfar – which founder Telfar Clemens launched in 2005 as “a DIY means of dressing himself and his friends” – would first need to establish that the design of its bag does, in fact, maintain secondary meaning (and thus, functions as a trademark). This is a necessary step because a product design can never be inherently distinctive (as the Supreme Court established in the Walmart v. Samara Brothers case in 2000), and thus, in order to claim trademark rights in the unregistered design of the bag, Telfar has to show acquired distinctiveness.

To do so, brands, such as Telfar, need to show a combination of the following factors: (1) advertising expenditures directly related the to product bearing the trademark; (2) consumer studies linking the mark to a single source; (3) unsolicited media coverage of specific mark-bearing products; (4) sales success of the mark-bearing products; (5) attempts by others to plagiarize the mark; and (6) the length and exclusivity of the mark’s use.

The (hypothetical) good news for Telfar: it might have a compelling case to make when it comes to a number of these factors. It has been consistently using the bag design for 7 years, and maintains noteworthy sales for this specific style; between 2017 and 2019, sales of the Shopping Bag “helped spur Telfar’s annual sales to $1.6 million from $100,000,” according to the Wall Street Journal. In a separate metric of success, luxury resale company The RealReal revealed in its annual “Luxury Resale Report,” which it released in August 2020, that demand for Telfar’s coveted Shopping Bag surged by “246 percent.”

At the same time, the Shopping Bag has garnered a widespread array of unsolicited media attention from the likes of Vogue, the New York Times, New York Magazine, the Guardian, Business Insider, the New Yorker, and the Wall Street Journal, which recently put the bag on a list of “10 Cult Fashion Items that Stand the Test of Time,” among many other publications, and and it boasts a growing group of big-name celebrity fans like Oprah, Dua Lipa, Bella Hadid, Selena Gomez, etc.

Assuming Telfar could show secondary meaning (and there is certainly no guarantee that it could), it would then have to pass muster on the likelihood of confusion front, which considers an array of elements – from the similarity of the marks in their entireties and the similarity in the goods or services the marks represent to the similarity of the trade channels, and the circumstances and the buyers in the sale of the products. This could prove to be difficult for a few reasons, one of which being the differing logos at play – i.e., Telfar’s “T” and Guess’s “G.” (The existence of other logo-embossed leather bags in the market may further complicate this.)

No stranger to litigation, Guess was notoriously embroiled in a decade-long multi-national legal battle with Gucci, after the Italian luxury brand filed suit against Guess in 2009, accusing it of counterfeiting, trademark infringement, and unfair competition in connection with its widespread use of lookalike logo on footwear. The New York case came to a close in 2018, when Gucci and Los Angeles-headquartered Guess agreed to settle. The out-of-court resolution came five years after a judge for the U.S. District Court for the Southern District of New York granted Gucci a $4.7 million damages award, a small portion of the $221 million that Gucci was originally seeking.

More recently, Guess was named in – and remains at the center of – a highly-publicized sexual harassment, gender violence, retaliation, negligent supervision, and negligent interference with prospective economic relations case, in which the brand is being accused of “know[ing] for over a decade that [founder] Paul Marciano is a recidivist sexual predator, and has chosen to harbor and enable him as he devastates women’s lives.” In the complaint, which was filed in a California state court early this year, the Jane Doe plaintiff alleges that “instead of listening to at least seven women who went on the record against its Founder, Board member and Chief Creative Officer, GUESS has kept Marciano at its helm, allowing him to continue to use his prestigious position to lure and sexually assault more young female models.”

In terms of a potentially budding Telfar v. Guess battle, fashion director and founder of Black Fashion Fair Antoine Gregory, who first pointed out the similarity between the bags, notes that there is more going on here than a routine case of a mass-market brand too much “inspiration” from its smaller counterpart. In a string of tweets on Friday, Gregory stated that “the most annoying, and yet, [most] interesting part of this is the fact that a company like GUESS has the capital and resources to produce this bag in great quantities when the original designer could not.” (Telfar has, on more than one occasion, addressed the difficultly of scaling an independently-owned business and its “it” offering). And more generally, he notes that the situation “really just speaks to the lack of access granted to Black designers. The lack of capital, [and] the lack of resources the industry provides them.”

UPDATED (March 27, 2021): In a statement provided to Complex, a rep for Guess’ licensee said: “Signal Brands, the handbag licensee of Guess, Inc., has voluntarily halted the sale of its G-Logo totes. Some on social media have compared the totes to Telfar Global’s shopping bags.  Signal Brands does not wish to create any impediments to Telfar Global’s success and, as such, has independently decided to stop selling the G-logo totes.”

UPDATED (March 29, 2021): The New York Times’ Vanessa Friedman writes that Mr. Clemens and his business partner Babak Radboy “become aware of the Guess copy when a friend from Australia emailed them about the bag in February,” but have opted not to take legal action because they “never saw the Guess bag as a threat to their business,” but did, however, view “a court case as a complicated effort and a probable long-term financial drain.”