Forever 21 and Gucci put differences aside over stripe designs
It has been a busy month for Forever 21, with the retailer managing to secure not one, but two, trademark settlements with big brands.
Earlier this month, WIPR reported that a battle between Forever 21 and sportswear company Puma had come to an end after the parties agreed to settle.
Now, we bring news that Forever 21 has also settled its dispute with luxury brand Gucci, more than a year after the brawl first broke out.
The court filed an order vacating all pre-trial and trial deadlines and hearings earlier this month. Forever 21 and Gucci filed their joint notice of settlement in late October.
Back in July last year, Forever 21 sought declaratory judgment that it wasn’t infringing Gucci’s trademarks.
In the complaint, which was filed at the US District Court for the Central District of California, Forever 21 called for protection against a threat of trademark litigation by Gucci over a stripe design on some of the retailer’s items.
At the time, Forever 21 said: “Gucci has warned Forever 21 in writing of Gucci’s allegations that Forever 21 is infringing Gucci’s trademark and has threatened to sue Forever 21 to recover monetary and injunctive relief.”
According to Gucci, the brand’s stripe designs—the “green-red-green” and “blue-red-blue” marks— are some of its most famous trademarks.
In November, district judge Fernando Olguin dismissed Forever 21’s claims for non-infringement and cancellation, but allowed the retailer to re-file an amended complaint.
Olguin was “sceptical” that Forever 21 had sufficiently alleged facts to support its claims for cancellation based on lack of secondary meaning, aesthetic functionality, and genericism.
Later in November, Forever 21 filed its amended suit, providing more than 100 examples of striped clothing by different brands and claiming that it doesn’t use stripes as a trademark or source-identifier but rather in ornamental, decorative, and aesthetically functional ways.
The complaint added: “Gucci should not be allowed to claim that Gucci alone has a monopoly on all blue-red-blue and green-red-green striped clothing and accessory items.”
On October 31, Forever 21 and Gucci laid down arms, citing a settlement which resolves the entire case.
In early January next year, the parties will attend a hearing in connection with the settlement, before the scheduled trial in February. If the parties file a notice of dismissal before the hearing, all hearings will be vacated.
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