image: Gucci

image: Gucci

Two giants in their respective rights, Gucci and Forever 21 are at war … over stripes. After receiving a handful of strongly worded cease and desist letters from the Italian design house, the fast fashion giant filed an equally strong-worded lawsuit, asking a federal court in California to cancel a dozen or so of Gucci’s immensely valuable trademark registrations, and as of late last week, Gucci has suffered a preliminary set back. 

Despite Gucci asking a federal court in California to dismiss the case that Forever 21 filed against it in June – alleging that the fast fashion giant is “brazenly” masquerading as a “victim of unfair competition in search of legal redress in the courts,” and that it is “bringing suit to cancel some of the most famous marks in the fashion world” and “profiting handsomely by flaunting the law” – the court has refused to toss out the case. Instead, 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. 

On Friday, Judge Olguin rejected a request by Gucci to dismiss the trademark cancellation claims set forth by Forever 21, arguing that Gucci’s blue-red-blue and green-red-green trademarks lack the necessary secondary meaning to function as trademarks (in English: When consumers see blue-red-blue and green-red-green motifs on garments and accessories, they do not automatically associate them with Gucci). 

Forever 21’s lawsuit calls for the Gucci trademark registrations at issue (at least nine different trademark registrations) to be cancelled and any pending applications for related marks to be terminated, thereby, quashing any potential trademark infringement claims that Gucci has against Forever 21. 

According to a statement from Forever 21’s attorney, Laura Chapman of Sheppard Mullin provided to TFL on 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.” 

Chapman notes that as Forever 21 identified in its Second Amended Complaint, “The case has more than one hundred examples of the use of these striped designs by many brands, 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.”

Forever 21 filed its amended complaint in November after Judge Olguin held that the retailer had not sufficiently made its case as to why an array of Gucci’s trademark registrations for its three-stripe designs should be invalidated. According to Judge Olguin, “The court is skeptical that [Forever 21] has sufficiently alleged facts to support its claims for cancellation based on lack of secondary meaning, aesthetic functionality and genericism.”

The fast fashion giant filed suit against Gucci this summer after the Alessandro Michele-helmed brand repeatedly threatened to sue Forever 21 for using an array of its registered trademarks, i.e., red and green, and red and blue stripes, on its garments and accessories. According to a Gucci spokesman: “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 port of its ongoing commitment to the vigorous protection of its valuable intellectual property rights and distinctive brand identity.”