image: Footwear News
In something of a role reversal, Gucci has been slapped with a lawsuit by notorious copycat retailer Forever 21. According to the Los Angeles-based fast fashion giant’s lawsuit, which was filed this week in the U.S. District Court for the Central District of California, Gucci has repeatedly threatened to sue Forever 21 for using an array of its registered trademarks. As a result, Forever 21 is taking the matter to court to wage war against the famed Italian design house.
According to Forever 21’s complaint, in which the retailer calls itself an “American success story,” Gucci first sent Forever 21 a cease and desist letter in December 2016, in which Gucci demanded that Forever 21 cease all sales of garments and accessories bearing blue-red-blue and green-red-green stripes – as Gucci maintains federal trademark protection for those specific stripe combinations (and has for some time now, with registrations dating back to 1988).
Garments bearing Gucci’s striped trademarks
The initial letter was followed by two more letters from Gucci in January and February 2017, respectively, threatening to file suit if Forever 21 did not remove the garments and accessories at issue, namely, three bomber jackets, one sweater, and a choker necklace, from its stores and e-commerce websites.
Forever 21 has since followed up by filing a declaratory judgment action against Gucci, asking a federal court in California to declare that its garments are not infringing Gucci’s striped marks, and as a result, Gucci does not have a case for trademark infringement. (For the uninitiated, a declaratory judgment is a binding judgment from a court defining the legal relationship between parties and their rights in the matter before the court. It asserts the court’s authoritative opinion regarding the exact nature of the legal matter without requiring the parties to do anything).
And in case that is not enough, 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.
One of the allegedly infringing Forever 21 designs
Forever 21 alleges in its lawsuit, “Many clothing and accessory items adorned with decorative stripes colored blue-red-blue or green-red-green are sold by countless third parties … The colors red, blue, and green, and stripe designs, are among the most favorite, popular and widely used colors and design features on clothing.”
With that in mind, it states that “Gucci should not be allowed to claim that Gucci, alone, has a monopoly on all blue-red-blue and green-red-green striped clothing and accessory items.”
Moreover, the fast fashion giant attempts to disprove Gucci’s trademark infringement claims (which rely on the concept that consumers will be confused as to the source of the allegedly infringing garments and accessories – i.e., will think Forever 21’s striped products are somehow affiliated with Gucci), stating: “Consumers are not likely to be confused into believing the Striped Products sold in Forever 21’s stores by Forever 21 are manufactured by, sponsored by, authorized by, or otherwise associated or affiliated with Gucci.”
According to a statement from Gucci, provided exclusively to TFL on Tuesday: “Forever 21’s reputation for being accused of profiting from the trademarks and copyrights of others, including Gucci, is well established.”
The Gucci spokesman further stated: “Now, 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.”
One of the allegedly infringing Forever 21 designs
The move comes on the heels of Forever 21 filing a similar suit this past March against German sportswear giant, adidas. In that suit, Forever 21 alleged that it has repeatedly “fallen victim to adidas’s threats [of trademark infringement litigation] … Since 2006, adidas has commenced a pattern of complaining about striped apparel sold by Forever 21, and it has steadfastly increased its threats to encompass virtually any item of clothing with decorative stripes.”
That matter is still underway before the U.S. District Court for the Central District of California, as is the trade dress, copyright and design patent infringement lawsuit that Puma filed against Forever 21 earlier this year, alleging that the notorious copycat infringed a number of footwear styles from Rihanna’s collection for Puma.
Representatives for Forever 21 were not immediately available for comment.
* The case is Forever 21, Inc. v. Gucci America, Inc., et al., 2:17-cv-04706 (C.D.Cal).
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