## Facts

- Gucci, a luxury fashion brand, owned federal trademark registrations for several source identifiers used on handbags, footwear, apparel, and accessories.
- Gucci asserted rights in: (1) a green–red–green stripe mark; (2) a repeating interlocking “GG” pattern; (3) a “diamond motif” trade dress associated with a brown/beige repeating GG canvas; (4) a stylized single “G” design; and (5) a script “Gucci” word design.
- Guess and multiple licensees sold accessories and related goods using a “4G/Quattro G” repeating pattern and other design elements Gucci claimed were confusingly similar to Gucci’s marks and trade dress.
- Evidence included internal communications indicating some Guess personnel viewed certain designs as similar to or reminiscent of Gucci’s aesthetic.
- Gucci alleged both point-of-sale confusion and post-sale confusion across a large number of accused products.
- Guess denied infringement, raised defenses including functionality and laches-related defenses, and sought partial cancellation of Gucci’s Stylized G registration on abandonment grounds; Gucci sought cancellation of a Guess registration based on abandonment.

## Issues

1. Whether Gucci’s asserted marks and trade dress were valid, nonfunctional, and protectable, and the proper scope of protection for each.
2. Whether Guess’s accused designs created a likelihood of consumer confusion (including post-sale confusion) under the Second Circuit’s *Polaroid* factors.
3. Whether Guess’s conduct constituted dilution under New York law and related common-law theories.
4. Whether Guess committed counterfeiting or willful infringement warranting enhanced monetary relief.
5. Whether either party proved abandonment supporting cancellation (or partial cancellation) of the other’s registration.

## Decision

- The court found Gucci’s core identifiers (including the stripe mark and repeating GG pattern) protectable, but limited the scope of protection to prevent overbroad control of common fashion design elements.
- Applying the *Polaroid* factors, the court found infringement only as to certain specific uses/products; many accused products were found non-infringing due to differences in overall presentation, branding, and marketplace context.
- The court found only limited dilution and granted partial relief under New York statutory and common law largely tracking the infringement findings.
- The court declined to treat Guess’s conduct as counterfeiting and rejected Gucci’s broad claim of willfulness, finding at most partial intent to trade on Gucci’s image without “slavish copying.”
- The court rejected Guess’s abandonment-based counterclaim against Gucci’s Stylized G registration.
- Remedies were calibrated to the narrow set of proven violations, resulting in targeted injunctive relief and damages far below the amount Gucci sought.

## Legal Principles

- Trademark and trade-dress protection requires valid, source-identifying, nonfunctional matter; protection is limited to the specific presentation proven to function as a mark.
- Likelihood of confusion is evaluated under the *Polaroid* factors and is context-dependent, requiring attention to overall appearance, branding, channels of trade, and evidence of actual confusion.
- Post-sale confusion is actionable, but it must be supported by the overall marketplace context and the challenged product’s presentation.
- Strong marks do not confer a right to exclude competitors from using common design vocabulary; trademark law protects source identification rather than general fashion trends.
- Counterfeiting and enhanced remedies typically require proof of close imitation and deliberate copying consistent with counterfeit conduct; partial intent to emulate a style may be insufficient.
- Cancellation for abandonment requires proof that the registrant discontinued use with intent not to resume; the challenger bears the burden.

## Conclusion

The court upheld Gucci’s protectable trademark and trade-dress rights but limited their reach, finding only discrete instances of infringement and modest dilution; it denied counterfeiting and broad willfulness theories and imposed narrow, product-specific injunctions and comparatively modest monetary relief.


Gucci Am., Inc. v. Guess?, Inc., 868 F. Supp. 2d 207 (S.D.N.Y. 2012)