Battle of the G's Rages On: Gucci's $124 Million Trademark and Trade Dress Infringement Lawsuit Against Guess? Withstands Summary Judgment

by Sheppard Mullin Richter & Hampton LLP

[author: 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.


DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Sheppard Mullin Richter & Hampton LLP | Attorney Advertising

Written by:

Sheppard Mullin Richter & Hampton LLP

Sheppard Mullin Richter & Hampton LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at:

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.