Legal Experts Weigh in on the Gucci vs. Forever 21 Stripe Trademark Battle

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Dueling lawsuits are creating a debate over the trademark of stripes.

The fight over stripes is heating up. Last week, Gucci made two filings against Forever 21 in response to the fast-fashion retailer's lawsuit seeking protection against the Italian fashion house's trademark of the blue-red-blue and green-red-green stripe combinations. 

Gucci argues that its alternating stripes have been "iconic codes" of the house for more than 50 years.

The lawsuits have led some folks in and out of the industry to wonder, "How can anyone own stripes?"

Julie Zerbo, founder of The Fashion Law, says it's hard to give one specific answer, but did offer this explanation to The Hollywood Reporter: "Gucci has been using these stripes in a way that is distinctive — that's a key trademark word — to its own brand, so while it doesn't own stripes, in theory it has exclusive rights to this specific configuration of stripes on specific goods."

The New York-based legal consultant explains that the case depends on how an average consumer would view the stripes.

"It does come down to, are consumers going to be confused? When I say confused ... are they going to be misled? Are they going to think that Gucci has authorized this use? Have they licensed this? Have they collaborated?" notes Zerbo.

Los Angeles-based Staci Jennifer Riordan, who heads up the fashion law team at global law firm Nixon Peabody, doesn't think anyone who walks into Forever 21 will think those stripes are Gucci.

"When a consumer walks into Forever 21, they would have to believe that the article being sold is a Gucci article. I think that's highly unlikely, especially because the stripes on the Forever 21 garments are not being used in a source-identification manner, they're being used in a mere decorative manner," argues Riordan. "Today, the trademark office will not register a trademark that's decorative, nor will the copyright office."

Asserts Riordan: "The only thing that a trademark protects is designation of origin, like who's the source of that product."

Adds Zerbo: "The whole job of a trademark is to enable a consumer to see a mark, whether it's a word or logo or design, and automatically know what brand that product is coming from."

Riordan likens the Gucci and Forever 21 dispute to the Star Athletica v. Varsity Brands case that was taken to the Supreme Court earlier this year, which centered on the copyright of chevrons, stripes and colorful motifs on cheerleading uniforms. The 6-2 ruling went in favor of Varsity Brands, which meant that design elements can sometimes be protected by copyright law.

Riordan notes that the copyright office considers mere stripes not original enough to warrant copyright protection, so under neither copyright law nor trademark law would Gucci have a valid registration. "Blue and red are two of the three primary colors, so to say Gucci owns blue and red stripes and no one else can use blue and red stripes, that's not the purpose of trademark law," says Riordan.

Fashion designers have long fought for the protection of their creations. In September 2012, a Manhattan appeals court upheld shoe designer Christian Louboutin's trademark on his famous red-soled shoes, while Yves Saint Laurent was permitted to continue selling shoes with red soles as long as the entire shoe was red. Meanwhile, the color Tiffany Blue is a trademark of American luxury jewelry company Tiffany & Co.

In June 2016, the Italian shoe label Aquazzura filed a lawsuit against Ivanka Trump, IT Collection LLC and Marc Fisher Holdings LLC, the manufacturer of her shoe line, claiming that Trump's "Hettie" sandal ripped off Aquazzura's copyrighted "Wild Thing" heels. Trump denied any wrongdoing and asked the court to dismiss the case. However, the court has ruled that it's necessary for Trump to give a deposition because she served as an executive at the time and had a "high-level, authoritative, personal involvement."

In this case, Forever 21 filed a declaratory judgment, which is a regular lawsuit for the most part, except that instead of citing a claim of trademark infringement or copyright infringement, "Forever 21 is asking the court to rule on a question," explains Zerbo. "The question here is: Are its garments infringing Gucci's trademarks?"

There's a good chance that we may never know who wins in the case. "As with most cases, they don't usually go all the way to trial," says Zerbo. "They usually end up settling in advance, in which case, Gucci and Forever 21 would work this out on their own. Forever 21 has a history of settling cases that are initiated against it. That's just its practice, so we may never get an answer from a court."