In a prior post, we discussed Forever 21’s lawsuit against Gucci in federal court in Los Angeles, seeking to cancel Gucci’s registrations for its Blue-Red-Blue and Green-Red-Green striped marks, and for a declaration that its clothing and accessory products that incorporate similar striping are not infringing.
As we noted there, the suit raises many issues of trademark law around Gucci’s rights in these designs. Among the issues of Gucci’s rights in the designs include whether the designs function as trademarks; whether they have achieved sufficient recognition and association with Gucci exclusively; and whether the designs are “aesthetically functional,” meaning that there is a competitive need to permit their use by others.
The issues of infringement raised by the case include whether Gucci will be able to establish consumer confusion, either at the point of sale or in the post sale context, whether Forever 21’s house mark dispels confusion, and whether there is a claim for trademark dilution. The complexity of the issues stems from the fact that trademark rights are not the right to exclude others from use of a word or symbol, but the right to prevent consumer confusion or deception.