Gucci America Inc. v. Guess?, Inc., et al.

Earlier this week, in a case styled Gucci America Inc. v. Guess?, Inc., et al., cause number 1:09-cv-04373-SAS-JlC in the United States District Court for the Southern District of New York, Judge Scheindlin issued an opinion and order on Gucci's claims. Gucci brought suit for trademark infringement, trademark counterfeiting, trade dress infringement, false designation of origin, trademark dilution and unfair competition under the Lantham Act and New York law against Guess?, Inc., et al. Gucci also sought a permanent injunction and cancellation of the trademark registration at issue. Judge Scheindlin's 100 page order provides a detailed overview of the claims, findings of fact and conclusions of law. Below are a few of the highlights on the opinion and order. Trademark Infringement Damages. The court found that Gucci was not entitled to Guess? profits from every allegedly infringing stock keeping unit "SKU," but did award Gucci $4,663,747.58 in damages with respect to some SKU's which are attached to the order as Exhibit A. The court found that there was not evidence sufficient enough to support an award of damages as measured by a reasonable royalty. Gucci and Guess? Trademarks. The court found that Gucci's marks were valid and entitled to protection. However, the court did criticize Gucci for waiting so long to bring suit against Guess?. The court emphasized that Gucci had several opportunities to see the infringing products in malls that housed both Guess? and Gucci stores, as well as in magazine ads that both companies placed in the same magazines. The court did cancel a Guess? Trademark. Permanent Injunction. The court granted Gucci a permanent injunction as follows: (a) use of the Quattro G Pattern with Gs in the corners - whether shaded or unshaded - on backgrounds of any color is permanently enjoined; (b) use of the GRG Stripe is permanently enjoined; (c) use of the Square G, when an exact replica of Gucci's registered Stylized G, is permanently enjoined. Trademark Counterfeiting Claim. The court denied Gucci's counterfeiting claim because courts uniformly "restrict trademark counterfeiting claims to those situations where entire products have been copies...". This case is likely to be prominently cited in briefs filed by parties in trademark litigation in connection with dispositive motions, trial proceedings and post-trial motions.

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