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Gucci v. Gucci Shops, Inc.

688 F. Supp. 916 (1988)

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Gucci v. Gucci Shops, Inc.

United States District Court for the Southern District of New York

688 F. Supp. 916 (1988)

Facts

Gucci Shops, Inc. (Gucci) (defendant) was internationally recognized as the manufacturer and retailer of high-quality leather goods and fashion accessories. The Gucci surname was a famous trademark around the world. Paolo Gucci (plaintiff) was a member of the famous Gucci family and a director, officer, shareholder, and designer for the Gucci company until his termination from employment. Following his termination, Paolo continued to design various products and used his full name “Paolo Gucci” as a trademark. Gucci repeatedly advised any potential American distributors of Paolo’s products that Gucci owned the exclusive rights to the trademark “Gucci” in the United States. Paolo filed an action in the district court, seeking a declaration describing the manner in which he could use his full name “Paolo Gucci” on the products he designed for the United States market. Gucci argued that any use of Paolo’s full name on the products he designed would lead to consumer confusion with the famous “Gucci” trademark and constitute infringement in violation of the Lanham Trade-Mark Act. Paolo claimed that his use of the trademark “Paolo Gucci” on products he designed would not cause consumers to believe they were purchasing Gucci products because Paolo included a disclaimer on his products explaining that he was no longer associated with the Gucci product line.

Rule of Law

Issue

Holding and Reasoning (Conner, J.)

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