–Cathy Dahl, Attorney

Trademark bullying has received a somewhat significant amount of attention over the last few years, including potential new legislation in Minnesota. A trademark owner (or “bully” in the eyes of some) may forum shop in order to achieve the best possible outcome.

Gucci takes issue with Guess and its use of a patterned “G” on shoes and other accessories.  (See image above – Gucci sells the shoe on the left and Guess sells the shoe on the right.)  Gucci filed suit against Guess in New York, Milan, China and France.  Gucci achieved a favorable outcome in New York, though it received a significantly lower amount of damages than sought, and therefore was a disappointing legal loss.  And just recently a Milan court ruled in favor of Guess.  Gucci has indicated that it will appeal the ruling, and we do not yet have an outcome in China and France.  Is Gucci a trademark bully?  Paul Marciano, CEO of Guess thinks so.  He recently indicated that he was thrilled with the outcome in Italy and believes that Gucci’s tactics amount to bullying because it has endless resources and is attempting to block Guess from expanding is fashion accessories business.

Both fashion houses follow and are inspired by worldwide fashion trends.

The above image shows purses offered for sale by Gucci and Guess, respectively, with some focus on letter patterns and the use of large letters as buckles.  As a consumer, I personally associate patterned letters and designs on a handbag or other items with Dooney & Bourke,  Louis Vuitton and Coach:



From my perspective, the purses sold by Gucci and Guess are as distinguishable from each other as they are from other “letter pattern” purses, particularly because these purses are traditionally pretty spendy.  Your typical high-end purse will run more than a few hundred dollars, and thus a consumer is more likely to be sophisticated and “in the know” as to what they are buying.  I would think the greater financial damages arise out of the sale of knock-offs.

So is Gucci a trademark bully or are they on solid ground in attempting to limit the reach of Guess and its “G” Logo fashion accessories?  If Guess didn’t make use of a “G”, I am rather sure there’d not be an issue at all, though the shoes depicted above seem to be directly competitive and visually highly similar in many respects, not just with respect to the use of a “G” pattern.  (Side note:  These are quite possibly the ugliest shoes I have ever laid eyes upon.  I would say the bigger confusion here is a failed sense of fashion….)

China and France, we await your verdict.  And then where, Gucci?