By Shannon King

The multi-million dollar trademark and trade dress dispute between Italian fashion label Gucci and American designer Guess?, Inc. ("Guess?") marches on toward trial as Judge Shira Scheindlin of the United States District Court for the Southern District of New York largely rejected Guess?’s motion for summary judgment to dismiss Gucci’s claims on February 14, 2012. The Court granted summary judgment and dismissed Gucci’s claims for monetary relief on the basis of federal trademark dilution as to two designs but left the majority of Gucci’s infringement claims untouched.

Gucci filed suit against Guess? and certain Guess? affiliates in 2009, claiming that Guess? was copying six of Gucci’s registered and unregistered designs as part of an elaborate scheme to trade upon the GUCCI marks and trade dress. Examples are depicted below:


Gucci Shoe                                                   Guess? Shoe



Gucci seeks an accounting of Guess?’s profits on the alleged copycat products (estimated to be over $98 million) as well as damages in the form of a reasonable royalty (estimated to be $26 million). In its summary judgment motion, Guess? argued that Gucci’s infringement claims based upon post-sale confusion failed as a matter of law because Gucci failed to proffer evidence that any purchaser actually bought an allegedly-infringing Guess? product instead of an authentic Gucci product in order to take advantage of post-sale confusion (i.e., that an unconfused purchaser bought a Guess? product in order to benefit from post-sale confusion with Gucci products). The Court rejected Guess?’s argument that evidence of actual confusion is required to prove infringement based upon post-sale confusion. Instead, the Court held that claims for post-sale confusion are subject to the standard likelihood of confusion analysis under the relevant Polaroid factors. In summary, the absence of actual confusion does not necessarily preclude post-sale confusion.

The Court also ruled that a reasonable inference could be drawn that Guess? acted in bad faith by "meticulously copying" Gucci’s trade dress although Guess? recognized that consumers might confuse the two patterns. Based upon such bad faith evidence, the Court rejected Guess?’s arguments to preclude Gucci’s claims for monetary relief on the basis of lack of evidence of actual confusion. The Court also rejected Guess?’s motion for summary judgment to preclude monetary damages on the basis of laches stating that such an equitable defense is fact intensive and not typically amenable to summary judgment.

The Court did grant summary judgment in favor of Guess? in connection with some of Gucci’s trademark dilution claims. The Court applied the pre-Trademark Dilution Revision Act higher "actual dilution" standard in assessing claims related to two of the allegedly infringing marks first used in commerce by Guess? prior to October 6, 2006. The Court found that Gucci failed to provide credible evidence of actual dilution with respect to these claims and, thus, dismissed Gucci’s pre-October 6, 2006 dilution claims. On February 21, 2012, the Court issued a clarification stating that while the lack of actual dilution prevented monetary relief as to such dilution claims, Gucci could still seek injunctive relief.

The final pre-trial conference in this case is currently set for March 13, 2012.

For a full copy of the February 14, 2012 opinion, click here. For a full copy of the February 21, 2012 clarification, click here.