Gucci Shops, Inc. v. RH MacY & Co., Inc.
446 F. Supp. 838 (1977)
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Rule of Law:
The use of a phonetically identical name and similar design elements on a product, even as a parody, constitutes trademark infringement if it is likely to cause confusion as to the source or affiliation of the goods or to dilute the value of the senior user's well-known mark by damaging its reputation.
Facts:
- Gucci Shops, Inc. (Gucci) sells high-quality merchandise, including luxury travel and tote bags, which have a strong international reputation.
- Gucci has used the registered trademark 'GUCCI' since 1953 and a distinctive, unregistered green-red-green stripe design on its products since 1963.
- These two marks are often used in conjunction to identify Gucci's products and signify their quality.
- Fashioncraft Products, Incorporated (Fashioncraft) began manufacturing and selling an inexpensive vinyl diaper bag.
- The Fashioncraft diaper bag featured a green-red-green diagonal stripe on its side panels.
- Printed above the stripe on the bag was the word 'GUCCHI,' and printed below the stripe was the word 'GOO.'
- The Fashioncraft diaper bag closely resembles an ordinary travel or tote bag, a category of goods sold by Gucci.
Procedural Posture:
- Gucci Shops, Inc. sued Fashioncraft Products, Incorporated, and retailers Gimbel Brothers, Inc. and R. H. Macy & Co., Inc. in the U.S. District Court for the Southern District of New York.
- The complaint alleged federal and state claims for trademark infringement and unfair competition.
- Gucci Shops, Inc. filed a motion for a preliminary injunction to restrain the defendants from manufacturing and selling the 'GUCCHI GOO' diaper bag.
- Prior to the court's hearing on the motion, defendant R. H. Macy & Co., Inc. voluntarily removed the product from its shelves.
- Defendant Gimbel Brothers, Inc. informed the court it would not oppose the application for a preliminary injunction.
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Issue:
Does a manufacturer's use of a phonetically identical name ('GUCCHI') and a similar stripe design on a diaper bag, intended as a parody, constitute trademark infringement likely to cause confusion with, or dilute the value of, the registered 'GUCCI' mark and associated stripe design used on luxury bags, thereby warranting a preliminary injunction?
Opinions:
Majority - Motley, District Judge
Yes, Fashioncraft's use of the 'GUCCHI' name and stripe design on its diaper bag is likely to cause confusion and warrants a preliminary injunction. The court found that Gucci demonstrated a probability of success on the merits and the potential for irreparable injury. The statutory test for infringement is the likelihood of confusion. The court determined that the name 'GUCCHI' is phonetically identical to 'GUCCI,' a key factor supporting confusion. Furthermore, the use of these marks on a product similar in appearance to Gucci's tote bags could mislead the public into believing Gucci was associated with the diaper bag. The court rejected the argument that the product was a harmless parody, citing precedent that a well-known trademark can be protected from ridicule that tarnishes its reputation. Because damage to a business's reputation and the value of its marks cannot be adequately compensated with money, the injury is irreparable, justifying the injunction.
Analysis:
This decision reinforces that the 'likelihood of confusion' standard in trademark law extends beyond direct competition and consumer mistake about product origin. It establishes that parody is not an automatic defense, especially when it dilutes a famous mark by associating it with inferior products or subjects it to ridicule. The case highlights the importance of phonetic similarity and overall trade dress in infringement analysis. It also affirms the principle that reputational harm constitutes irreparable injury, a critical component for securing injunctive relief in trademark and unfair competition cases.
