In the recent trademark battle between Forever 21 and Gucci, Forever 21 took the first step, filed suit and asked the Court to declare that it does not infringe Gucci registrations. According the complaint, Gucci had informed Forever 21 that Gucci believed certain items offered for sale on Forever 21’s website infringed Gucci’s trademark registrations for the use of green and red stripes and blue and red stripes on clothing and accessories.
Anthoula Pomrening, partner at IP law firm McDonnell Boehnen Hulbert & Berghoff and Chair of the firm's Mechanical & Materials Practice Group, sat down with Inside Counsel to discuss the Gucci and Forever 21 trademark battle. She has been following the story closely and says the practice of filing a declaratory judgement is not uncommon. Companies with strong brands routinely police the use of their trademarks, so it is not surprising that both Adidas and Gucci have contacted Forever 21 concerning their clothing items.
“The litigation may help to define further boundaries on how trademark owners in the fashion industry can protect and extend their brands (for example, to different locations on clothing),” she explained. “Depending upon how the dispute is resolved, trademark owners might file more design patents, while they wait to establish acquired distinctiveness, or use creative ad campaigns to generate source identification for their marks.”
Today, the filing of a declaratory judgment suit is not uncommon in patent and trademark matters due to the nature of such disputes. When a product on the market infringes a party’s patent or trademark, the owner of the IP will typically send a letter informing the other party of its IP and asking them to stop selling or making the product. Often there is back and forth between the parties to resolve the dispute without the need to file suit. In some instances, when the alleged infringer wants business certainty on their timetable, that party can preemptively file suit in a jurisdiction of its choice and ask the court to resolve the dispute, therefore starting the judicial process of determining whether the product infringes someone else’s rights and lifting any ambiguity over the product.
“Rather than wait to be sued by Gucci, Forever 21 took the first step, filed suit and asked the Court to declare that Forever 21 does not infringe those Gucci registrations,” he said. “By doing so, F21 started the judicial process to resolve this dispute in the court of its choice.”
Without regular policing of trademarks, companies run the risk of unauthorized uses of the trademarks, which could lead to confusion for customers and dilution of the trademarks, per Pomrening. The primary function of a trademark is that it is a source identifier - the more unauthorized uses of a trademark, the less likely the mark will function as a source identifier for the trademark owner.
In fact, Law360 states, “Forever 21 is a so-called fast-fashion company that creates cheaper versions of trending styles by skirting the edges of IP protections.” Adidas and Gucci did what brand owners should do--contact the alleged infringer and attempt to stop the behavior, initially without resorting to litigation.
According to Pomrening, some best practices that companies with strong brands can follow to protect themselves from trademark infringement including: police trademarks on a regular basis,educate marketing department on practices to protect trademarks and actions to take for brand extension and; issue detailed brand use guidelines for the public and partners such as licensees on proper trademark use.