Valentino Wins 16-Year Trademark Case; Valentino’s Lawyer Explains the Ruling

For the past sixteen years, Valentino has been engaged in litigation with a company called Florence Fashions over the use of the Valentino trademark.

On June 25th, DC-based intellectual property firm Rothwell, Figg, Ernst & Manbeck settled the case of Valentino U.S.A., Inc v. Florence Fashions (Jersey) Limited with the Trademark Trial and Appeal Board (TTAB). The TTAB handed down the following judgment: “Valentino established priority of use and that a likelihood of confusion existed between the Valentino marks and Florence Fashions’ Giovanni Valentino and Gianni Valentino Marks.”

Confused? We were too. So we asked one of the lawyers from the firm that reps Valentino, Anne Sterba, to explain the case and the ruling.



What was this case all about?

A company called Florence Fashions filed two trademark applications and had two trademark registrations for Giovanni Valentino and Gianni Valentino. Valentino’s position was that there was a likelihood of confusion between their Valentino mark and the Gianni and Giovanni Valentino marks. From Valentino’s point of view, if Florence Fashions uses the Valentino mark consumers will be confused by seeing a Giovanni Valentino purse and and think that it’s Valentino Garavani’s product. The Garavani and the Giovanni–the Italian “G” names–get kind of confusing. So the parties litigated for 16 years.

Why did it take so damn long to settle this case?

A lot of discovery [the process of gathering information relevant to the case], a lot of extensions of time, a lot of suspensions so the parties could talk settlement.

And what does the ruling mean?

The end result is that Florence Fashions can’t get a registration for a Valentino trademark and the registrations that they already have are canceled. One of Florence Fashions’ main arguments was that there were so many other Valentinos out there that consumers have become used to the Valentino name and can differentiate between all of the different Valentino names. The TTAB came through and said, “No, you didn’t provide enough evidence to that fact.”

When you have a trademark like Valentino, you don’t want secondary users to come in and weaken the mark. So from a trademark point of view it’s very important to protect it and to keep these types of mark strong. After 16 years, it’s finally over.

How is this different from counterfeiting?

Valentino never said that Florence Fashions was a knock-off. Counterfeits pretend to be you and Florence Fashions is trying to be their own entity.

We have a series called Adventures in Copyright that exposes knock-offs–why do big retailers get away with producing knock-off designs?

Part of the problem in the U.S. is that there isn’t a lot of protection for fashion designs. You have to rely on “trade dress” protection meaning that consumers have recognized the bag as coming from Valentino. That standard is so high that it’s pretty unattainable. That’s why you have to rely on your brand to protect your stuff.

So is there anyway designers can protect their patterns?

If you took a Valentino bag–not that I would advocate doing this–and copied the design of it and put your own label and called it Fashionista bags and made a completely different label in interior design, Valentino may be very upset, but there’s nothing they can do about it. That’s the difference between a knock-off and a trademark.

We represent a few start up designers and they get very upset when this happens. Where there is something you can do about it is if that company that is knocking you off and taking your designs is also your distributor. Because they’re taking your patterns and making the garment. I can’t go after them for making the garment but I can go after them for taking the patterns because it’s a breach of contract issue, not an intellectual property issue.

So, for example, if a designer sees their shirt in a store, but it has a different label on it, and if they find that the measurements of that shirt are identical to their product, and they find out that the same company that manufactures their shirt manufactures this other shirt and they’re using your pattern to do that, you can go after them for breach of contract.

And this actually happens?

I would have said no, but it’s happened twice in the last six months with two different clients.