In 1953, Aldo Gucci flew to New York. During his visit, the eldest son in the Gucci family – who had just been appointed chairman of the family leather goods business following his father, Gucci founder Guccio Gucci’s death – noticed just how many American men were wearing simply crafted, slip-on loafers. So, when Mr. Gucci returned to Gucci’s headquarters in Italy, he set out to add a leather loafer to the house’s lineup of goods. The finishing touch? Affixed to each shoe’s upper was a golden-hued horsebit, a staple Gucci symbol. Fast forward 65 years from Mr. Gucci’s New York trip and the subsequent introduction of Gucci’s horse bit loafers, and the brand’s staple footwear offering has enjoyed what fashion critics and analysts can unanimously agree is “remarkable longevity.”
How do you explain the enduring influence of the otherwise simple shoe? “The difference is the horsebit,” Ellen Goldstein, professor of accessories design at New York’s Fashion Institute of Technology, told AdWeek a few years ago.
Guccio Gucci had started using the horsebit design on his brand’s leather goods “after working at The Savoy, [a hotel] in London, where he’d been inspired by the aesthetic of the English racing set.” In the time since he and his son first added the symbol – as well as the house’s interlocking “G”, its stylized name, and its red and green, and red and blue striped patterns – to the brand’s wares, these insignia have simultaneously come to distinguish Gucci’s products from those of others and to lure in consumers that want a piece of the brand’s reputation for luxury, quality, and fashionability. In other words, they act as trademarks. (Although there is some debate, at least according to Forever 21, as to whether the striped marks actually function as trademarks as opposed to decorative design elements).
With the staying power of the horsebit in mind, Gucci’s American arm filed an application to federally register the horsebit as a trademark with the U.S. Patent and Trademark Office (“USPTO”) in 2013. According to the application, which sought to register a “three-dimensional horsebit design mark” for use on footwear, Gucci had been using the horsebit on shoes since 1953. However, despite such longstanding use by Gucci, the USPTO was not quick to register the horsebit mark.
In fact, at first, it flat-out refused.
In the summer of 2013, a few months after Gucci’s legal team filed its trademark application for registration for the horsebit, the USPTO’s examiner Saima Makhdoom, Esq issued a preliminary refusal, asserting that the design was just that … a “merely ornamental” design. In short: the horsebit was “a decorative element on [Gucci’s] shoes.” It was not, in the trademark examining attorney’s mind, a symbol that served to indicate the source of the shoes goods.
Gucci disagreed. Six months after being handed an initial loss, Gucci responded to the USPTO’s refusal. On behalf of the design house, Andrea L. Calvaruso and Amy Gaven – two highly-regarded intellectual property specialists at the then-178-year old general practice firm, Kelley Drye, who were acting as outside counsel for the brand – “respectfully challenged” Ms. Makhdoom’s findings.
In a 10-page memorandum in support of Gucci’s application, Ms. Calvaruso and Gaven argued that the horsebit mark had, in fact, acquired the necessary distinctiveness to “serve as a source identifier when applied to the goods listed in the application, namely footwear.” But they did not stop there. Attached to their memorandum was a voluminous stack of evidence, 250 pages of evidence filled with examples that showed, according to the memo, that the horsebit mark was more than merely a decorative element on the brand’s shoes, and was, instead, a source-identifying symbol.
Those 200-plus pages included Gucci seasonal ad campaigns that featured horsebit-affixed loafers. There was an article from the Associated Press, dated June 19, 1980, dissecting the widespread copying of all things Gucci, including the horsebit. That article was joined by more recent ones from the likes of Women’s Wear Daily and InStyle, with specific references to the “instant recognizably” of Gucci products, thanks to “their signature horsebit ornamentation.”
Alongside a still shot of Jonah Hill in the Wolf of Wall Street holding a Gucci loafer, complete with a horsebit ornament, was an image of Sophia Loren in the 1970 film La Maglie del Prete, wearing the horsebit loafers. Add to that, excerpts from glossy Rizzoli coffee table books and examples of magazine editorials featuring Gucci’s various uses of the horsebit mark – not just on footwear but on handbags, belts, and jewelry, as well. Still yet, there were paparazzi photos of celebrities – from Florence and the Machine’s Florence Welch at LAX in 2013 to Jane Birkin in Cannes in 1969 – all wearing horsebit-affixed goods. Also in the mix: a photo of John Wayne in a Gucci store in Rome in the 1960’s trying on the horsebit loafers and a photo of a young JFK, Jr. at the airport in Palm Beach with his month in 1973
Gucci’s legal team had compiled an expansive dossier than spanned decades and locales, and for Gucci, creative directors – all to show that the horsebit was much more than merely a decorative touch; it was a valuable indicator of source. And it worked. After years of back-and-forth, the USPTO issued a registration for Gucci’s horsebit mark last month. Gucci no longer maintained common law rights that existed on a state-by-state basis. It now had a nationally-recognized registration for its horsebit, and with it, something powerful to point to in what would be inevitable endeavors to police the market for unauthorized uses of its horsebit mark or any confusingly similar marks by others, and given the appeal of Gucci’s branded goods, there would be many.
In the meantime, Gucci has been looking to broaden its portfolio of protection for the horsebit. In April 2018, the American arm of the design house filed an application to federally register another depiction of its horsebit mark. Instead of a 3-D version, Gucci is seeking protection for “a stylized drawing of a horsebit” for use on “handbags; shoulder bags; messenger bags; tote bags; backpacks; wallets; cosmetic cases,” as well as footwear.
After overcoming an initial refusal from the USPTO, which called on Gucci to provide examples of secondary meaning for the mark since it is “a nondistinctive product design or nondistinctive features of a product design that is not registrable” without proof that consumers have come to identify a specific trademark or trade dress with a single brand, the trademark body issued a notice of allowance for the mark in February.