It’s not like names provide the strongest marks in the world; in fact, generally speaking, a name mark is on the weaker side. Unless it’s famous.
The Gucci® name is a famous brand. You hear it, you think of the high-end clothing and accessories designed by the Italian designer owned by the French couture house PPR. Now, along come the designer’s ex-wife, Jennifer Gucci, and their daughter, Gemma Gucci, trying to sell clothing and accessories under the name Gucci. Well, it’s their name, too, right?
Wrong. The US District Court for the Southern District of New York has enjoined these ladies from using the famous Gucci mark or anything confusingly similar to the mark for any products or services they might want to market. The bench trial showed the judge that the products and branding were confusingly similar to the Gucci merchandise; there’s a permanent injunction now in place.
How does the judge make the determination that a brand is “confusingly similar” to a senior brand?
In Polaroid Corp v. Polarad Elects. Corp, 287 F.2d 492 (2d Cir. 1961), Judge Friendly gave us the seminal test for likelihood of confusion. The so-called “Polaroid factors” are:
- the strength of the [original] mark
- the degree of similarity between the two marks
- the proximity of the products [i.e., how similar are the products identified by the senior and junior marks?]
- the likelihood that the prior owner will bridge the gap [i.e., if the products are different, will the owner of the senior mark be likely to enter the marketplace where products/services identified by the junior mark are sold?]
- actual confusion
- the reciprocal of defendant’s good faith in adopting its own mark
- the quality of defendant’s product, and
- the sophistication of the buyers.
Judge Friendly went on to state, “Even this extensive catalogue does not exhaust the possibilities–the court may have to take still other variables into account.” Thus, the lower courts must look at the listed factors and weigh them individually and together to determine the likelihood that a reasonable consumer in the marketplace would be confused as to the origin of the junior brand.
Let’s apply these factors to the Gucci case. The Gucci ladies marketed clothing and accessories under their name. Gucci the senior user markets clothing and accessories under the name. While a name mark is not terribly strong, any mark, including a name mark, acquires strength as its fame increases. The Gucci mark is famous (heck, even I’ve heard of it); therefore it is stronger than just an ordinary name mark would be. Consumers have come to associate that brand as identifying the senior user as the source of those goods in the marketplace. The senior user wins this point.
The degree of similarity? Identical. Gucci = Gucci. The senior user wins this point.
The proximity of the products is the next factor. The senior user markets clothing and fashion accessories. The two Gucci ladies marketed clothing and fashion accessories. These products are not only proximate, they are identical. Senior user wins again.
The likelihood that the senior user will bridge the gap. There is no gap to bridge. Senior user wins again.
Actual confusion. Without having read the transcript of the trial, I don’t know whether the senior user could produce evidence of actual consumer confusion in the marketplace; this would have been done through surveys. This one’s a draw until further notice.
Reciprocal of defendant’s good faith in adopting the mark. One of our junior users is the ex-wife of the designer. Ex-wives tend to have questionable good faith in matters such as this. The other junior user is the designer’s daughter. Her good faith may or may not be in question. Either way, these ladies decided to use their own name in the marketing of their product lines. However, they were in a position to know that the senior mark exists and could not help but know that they would be riding on the coattails of the success of that mark. If I were the judge, I’d lean this one toward the senior user even knowing what little I know.
Quality of the junior user’s product. I have no information on that.
Buyer sophistication. Senior-mark Gucci buyers are generally decently educated and fairly well off financially; they would therefore probably be at the higher end of the sophistication scale. This one could actually work in the junior users’ favor.
Taking all these factors together, the weight, under my quick-and-dirty glance through this case is on the side of the senior user. Therefore, the verdict granting a permanent injunction against the Gucci ladies is not surprising to me.
Not all marks are as clear-cut as is this one, at least in hindsight, is. A trademark infringement suit can destroy a young company’s marketing plan and cost that company tens or hundreds of $thousands. We don’t like to see that happen. Therefore, when you name your company, you should have a trademark search done as well as a search for the corporate name. The money you spend on that initial investment in your business can provide you with peace of mind that you do not tread on someone else’s intellectual property, thereby giving that someone else the power to shut you down before you even start.