Before it became a multi-million dollar brand with wildly coveted (and copied) garments and accessories and with retail outposts spanning the globe, Gucci was a family-run business in Florence, Italy. Guccio Gucci began making leather travel bags and accessories in the early 1920s, and ultimately, looked to his sons Aldo, Vasco, Ugo and Rodolfo to help him expand the business throughout Italy and internationally. The Gucci brand continued to be run that way – largely by Mr. Gucci (until his death in 1953) and his familial successors – up until the late 1990’s when Gucci’s assets, including its famous name and interlocking “G” logo, were acquired by PPR – or what is now known as Kering.   

The acquisition of the Gucci brand, which no longer has any family members in its ranks, has led to an array of legal battles over the years. The latest of such fights – which have seen Paolo, Alessandro, Jennifer, and Gemma Gucci, among others, in court over the years – comes in connection with a venture launched by Uberto Gucci, the great-grandson of Guccio Gucci.

After joining the family business, and ultimately taking on the role of Vice President of the Gucci Parfumes division in the 1980’s, Uberto Gucci recently went out on his own and launched his Miami-based Umberto Gucci brand, prompting a nearly 3-year long fight with the Italian design house that his great-grandfather founded.

Gucci made its distaste known in  September 2015 after Mr. Gucci filed a handful of trademark applications for registration with the U.S. Patent and Trademark Office (“USPTO”) for use of his name – as well as the Gucci family crest along with Uberto’s signature, which Mr. Gucci claims has “existed for several hundred years ago and belongs to the Gucci family” – on garments and leather goods, hotel services, liquor, and electronic cigarettes.

In response to Uberto’s trademark filings, Gucci filed two oppositions, asking the USPTO to refrain from registering his marks, alleging that “use of [Uberto Gucci’s] trademarks would be likely to cause confusion with, and dilute, [Gucci’s own] trademarks,” in large part because Uberto’s marks, “which incorporate the entirety of [Gucci’s] well known GUCCI trademarks, are confusingly similar, in appearance, sound and meaning, to [Gucci’s] marks.”

The brand further argued that the “Registration and use of [Uberto’s] trademarks is likely to create confusion and deceive purchasers into believing that [Uberto’s] goods originate from or are in some way sponsored, endorsed, licensed, associated or otherwise authorized or connected with [Gucci].” This confusion, according to Gucci, “would irreparably harm and damage the consuming public and [Gucci] because [Gucci] has no control over the nature or quality of the goods and services provided or produced by [Uberto] under [his] trademark.”

Still yet, Gucci asserted that “for decades, [it] has spent many millions of dollars in advertisement and promotion of goods and services bearing the GUCCI mark, and generates many millions of dollars in revenue annually from the sale of goods bearing the GUCCI mark.”

Following a back-and-forth before the USPTO’s Trademark Trial and Appeal Board (“TTAB”), the board held this month that Mr. Gucci may not enjoy federal registration of his marks due to the “quite high degree of similarity between the marks,” which would likely cause confusion amongst consumers.

According to the TTAB’s decision, “The GUCCI ‘signature’ mark and [Uberto’s] mark are written in fairly similar and underlined cursive script, with both “G”s featuring similar and fairly distinctive flourishes,” making them appear similar.

Moreover, the TTAB stated, “Given the conceded “public knowledge” that Uberto is part of the famous GUCCI family, and was part of the family business,” which Uberto asserted was true in an earlier filing, “the public would not be likely to perceive ‘By Uberto,’ as identifying a different source; to the contrary, it would be natural to assume that family member Uberto is still affiliated with the source of other GUCCI products, as he once was, and in a leadership capacity.”

Siding with Gucci, the TTAB held that this would be particularly confusing since “major fashion industry brands sometimes introduce ‘secondary’ or ‘diffusion’ product lines, which add a term to a house mark, such as ‘by [personal name],’ for example: Balmain’s secondary line ‘Pierre Balmain;’ Marc Jacobs’s secondary line ‘Marc by Marc Jacobs;’ Armani’s secondary line ‘Emporio Armani;’ and Chloé’s secondary line ‘See by Chloé.’”

As for the Uberto’s crest mark, the TTAB held that it is “sufficiently similar in appearance to” one of Gucci’s own trademarks for a family crest, and as a result Uberto’s design mark will likely “cause confusion to occur,” regardless of whether his family is the original party associated with the design. 

The TTAB ultimately held stated that “not only could the vast scope of [Gucci’s] goods and services offered under the Gucci Marks, the familial relationship between [Uberto’s] and [Gucci’s] namesakes, and the close similarity of the parties’ marks give rise to source confusion, but we must also keep in mind the overwhelming fame of the GUCCI word and ‘signature’ marks.” Gucci argued in an earlier filing that “for decades, [it] has spent many millions of dollars in advertisement and promotion of goods and services bearing the GUCCI mark, and [it] generates many millions of dollars in revenue annually from the sale of goods bearing the GUCCI mark.”

“In short,” the TTAB stated, “Given the ‘known’ family connection between Uberto Gucci and the famous Gucci family, [Gucci’s] history and fame, the nature of the goods and similarity of the marks, we find source confusion likely between, at the very least, [Uberto’s] marks.”