## Facts

- Gucci Shops, Inc. (Gucci) was internationally recognized as a manufacturer and retailer of high-quality leather goods and fashion accessories, and the “Gucci” surname was a famous trademark worldwide.
- Paolo Gucci, a member of the Gucci family, had served as a director, officer, shareholder, and designer for the Gucci business until he was terminated from employment.
- After his termination, Paolo continued designing various products and used his full name, “Paolo Gucci,” as a trademark on items he designed.
- Gucci repeatedly advised potential American distributors of Paolo’s products that Gucci owned exclusive rights to the “Gucci” trademark in the United States.
- Paolo filed an action in federal district court seeking a declaration describing the manner in which he could use his full name “Paolo Gucci” on products he designed for the United States market.
- Gucci contended that any use of “Paolo Gucci” would likely confuse consumers and would infringe the GUCCI trademark under the Lanham Act.
- Paolo argued that his use of “Paolo Gucci” would not cause consumers to believe they were buying Gucci’s products because Paolo included a disclaimer stating that he was no longer associated with the Gucci product line.

## Issues

1. Whether Paolo Gucci may use his full name “Paolo Gucci” as a trademark on products he designs for sale in the United States without creating a likelihood of confusion with Gucci’s famous GUCCI mark, and, if not, what limits (including disclaimers) are required to avoid confusion.

## Decision

- The court recognized that Paolo had a legitimate interest in using his full personal name in commerce, but that the GUCCI mark was famous and entitled to strong protection against consumer confusion.
- The court concluded that Paolo’s use of “Paolo Gucci” could not be left unrestricted because the shared “Gucci” name created a meaningful risk that consumers would assume a connection with Gucci.
- The court granted declaratory relief defining a limited, conditioned form of use for “Paolo Gucci,” requiring presentation and labeling that clearly separated Paolo’s goods from Gucci’s goods.
- The court required the use of clear disclaimers of affiliation, so that purchasers would be told Paolo was not associated with the Gucci companies when “Paolo Gucci” appeared on goods or related materials.
- The court rejected the position that Gucci was automatically entitled to bar every commercial use of Paolo’s full name, but also rejected the idea that Paolo could use “Paolo Gucci” without court-imposed safeguards.

## Legal Principles

- A person’s ability to use a personal name as a mark is qualified, not absolute, and may be limited when use is likely to confuse consumers as to source, sponsorship, or affiliation.
- In trademark disputes involving a famous surname mark, courts may tailor equitable relief to reduce confusion rather than impose a complete ban, especially where the defendant seeks to use a full personal name.
- Likelihood of confusion turns on the overall way the name is used in the marketplace; courts may require changes in presentation (such as how the name appears on labels or advertising) to distinguish competing sources.
- Disclaimers can be required when they provide a direct, effective statement that no business connection exists between the junior user and the trademark owner.

## Conclusion

In *Gucci v. Gucci Shops, Inc.*, the court addressed whether Paolo Gucci could use “Paolo Gucci” on goods he designed for the U.S. market despite Gucci’s famous GUCCI mark. The court allowed only a limited use of Paolo’s full name, conditioned on clear separation from Gucci’s branding and the use of disclaimers stating no association, so that consumers would not mistakenly believe Paolo’s products were connected to Gucci.


Gucci v. Gucci Shops, Inc., 688 F. Supp. 916 (1988)