On March 28, following close behind Fashion Week in New York City, U.S. District Judge Shira Scheindlin began conducting a trial on Gucci America Inc.’s (“Gucci”) infringement claims against Guess? Inc. (“Guess”). In the case, Gucci alleges that Guess was involved in a “massive, complicated scheme to knock off Gucci’s best-known and iconic designs” and claims that over $220 million in Guess products infringed Gucci’s designs. Among the “studied imitations of the Gucci trademarks” in question are:
- a green, red, and green stripe design (“GRG stripe”);
- a script Guess mark;
- a square G design; and
- a quattro G design, which features repeating interlocking G’s in a diamond pattern.
Gucci is seeking monetary damages totaling over $124 million.
In the court’s order denying Guess’ motion for summary judgment (with a few exceptions), the court found that Gucci presented reasonable assertions that: Guess produced goods that either copied or closely mimicked its designs; Guess acted in bad faith and developed designs that might cause consumer confusion through their “meticulous copying”; and Gucci produced evidence showing that actual confusion did occur.
The case is particularly interesting because Guess also sought summary judgment that Gucci was not entitled to monetary damages based on its trademark infringement claims because Gucci could not prove any actual lost sales. The court’s opinion provides a thorough analysis of Gucci’s “post-sale confusion” claims. Post-sale confusion claims make trademark infringement actionable, not because the consumer was confused by the similar goods, but because the consumer purposely purchased a cheaper alternative that looked similar, expecting the public to be deceived into thinking it was the genuine article in order “to gain the same prestige at a lower price.”
Guess argued that unless Gucci can produce evidence that a potential purchaser actually bought an allegedly-infringing Guess product instead of an authentic Gucci product in order to take advantage of confusion in the post-sale environment, Gucci’s post-sale trademark and trade dress infringement claims should fail. The court, however, held that Gucci need only show that post-sale observers are likely to confuse the allegedly infringing Guess products with Gucci products in order to avoid summary judgment on its infringement claims. The court further held that the test for post-sale confusion turns on an analysis of the several factors set forth in Polaroid Corp. v. Polared Elecs. Corp., 287 F.2d 492 (2d. Cir. 1961), including, in this case, any bad faith by the defendant and the relative quality of the products.
The suit, originally filed by Gucci in 2009, has been delayed until recently because the two parties have been litigating over privileged communications, which Guess lost. The case, Gucci America v. Guess Inc., 09-4373, U.S. District Court, Southern District of New York (Manhattan), is likely to be resolved in the next two or three weeks. As an interesting side note, it has been almost a year since Gucci’s sister company, Yves Saint Laurent, became embroiled in a trademark battle with shoemaker Christian Louboutin over his trademark red lacquered soles.