Forever 21 has taken an important first step towards resolving a long-standing dispute with Gucci over stripes by filing a suit for a Declaratory Judgment. Gucci has sent Forever 21 cease and desist letters as early December alleging trademark infringement over two distinct stripe patterns: blue-red-blue and green-red-green.
It is common in intellectual property disputes for the rights holder to first send a letter to the infringer demanding that they stop doing or selling certain things. When the letters going back and forth become “threatening” enough that they place the party in a “reasonable apprehension of suit,” the accused infringer can file for a Declaratory Judgment.
Doing this offers several benefits to the party filing and allows them to control the timeline and tone of the suit. In this case, it allowed Forever 21 to initiate the lawsuit, which they reasonably believed was coming, without having to wait on Gucci’s timeline. It also allowed Forever 21 to choose a favorable venue for the litigation and become the Plaintiff, which offers its own benefits.
This is the same strategy we saw Costco take in its dispute with Acushnet over golf ball patents. The outcome of the present litigation may have substantial consequences for other clothing brands and their designs.
Source: Inside Counsel