That Which We Call a Name, Be it Abboud or Gucci

As Iago puts it in Othello:

Good name in man and woman, dear my lord,
Is the immediate jewel of their souls.
Who steals my purse steals trash; 'tis something, nothing;
'Twas mine, 'tis his, and has been slave to thousands;
But he that filches from me my good name
Robs me of that which not enriches him,
And makes me poor indeed.

But when a name is also trademark, it clearly can and does enrich the one who buys it. The right to use one’s own name is therefore often a contentious issue, particularly for designers and their families, as illustrated in the cases of J.A. Apparel Corp. v. Abboud, 591 F.Supp. 2d 306 (S.D.N.Y. 2008), vacated and remanded, 568 F.3d 390, (2d Cir. 2009) and Gucci America Inc. v. Gucci, 07-cv-6820 (August 5, 2009, S.D.N.Y).

The clothing designer Joseph Abboud sold his right in his “names, trademarks, trade names, service marks, logos, insignias and designations” to J.A. Apparel Corp. When Abboud started using his own name in advertisements for his new line of clothing, J.A. Apparel sued to enjoin him. The district court agreed and granted the injunction, but the Second Circuit vacated the decision and remanded the case for reconsideration, finding that the district court had applied an erroneous standard when considering whether Abboud had agreed to sell all rights in the commercial use of his personal name, and whether Abboud’s use of his name was good faith non-trademark use (i.e., a factual statement that he was the designer of the new clothing line).

In the Gucci case, the daughter and former wife of the late designer Paolo Gucci were sued by Gucci America, and were found liable for infringement and dilution of the Gucci name and trademarks. Like Paolo Gucci himself, whose Gucci Shops were found to infringe his former employer’s rights in the Gucci name in 1988, they are reminders that having a name and using it commercially are two different things.