The opinion of the court was delivered by: MOTLEY
CONSTANCE BAKER MOTLEY, D.J.
MEMORANDUM OPINION ON MOTION FOR PRELIMINARY INJUNCTION
Plaintiff Gucci Shops, Inc. (Gucci Shps), alleges in its complaint four separate claims for relief arising under federal and state law relating to trademark infringement and unfair competition. The gravamen of plaintiff's suit is to prohibit Fashioncraft Products, Incorporated (Fashioncraft) from manufacturing a "diaper bag" with a diagonal stripe on both side panels consisting of green, red and green bands. Above the stripe, the manufacturer has silk screened the word "GUCCHI," and below the stipe, the word "GOO." Jurisdiction is based on 28 U.S.C. § 1338.
Plaintiff moved pursuant to Rule 65, Fed. R. Civ. P., for a preliminary injunction restraining defendants Fashioncraft and Gimbel Brothers, Inc. (Gimbels) from manufacturing, distributing, selling, or otherwise acting in a manner which would infringe any of plaintiff's trademarks.
At the hearing on the motion brought on by plaintiff, counsel for Fashioncraft appeared and argued in opposition. Prior to the hearing, defendant R. H. Macy & Co., Inc., voluntarily removed the offending product from its shelves. Counsel for Gimbels did not appear and the court was advised by counsel for plaintiff that Gimbels would not oppose plaintiff's application for preliminary injunction.
Though plaintiff alleges numerous claims for relief, the standard to determine whether a preliminary injunction shall issue is the same. Gucci Shops bears the burden of establishing either "probable success on the merits and possible irreparable injury, or - sufficiently serious questions going to the merits to make them a fair ground for litigation and a balance of hardships tipping decidedly toward the party requesting the preliminary relief." Sonesta International Hotels Corp. v. Wellington Associates, 483 F.2d 247, 250 (2d Cir. 1973); Triebwasser & Katz v. American Telephone & Telegraph Co., 535 F.2d 1356, 1358 (2d Cir. 1976).
PROBABILITY OF SUCCESS ON THE MERITS
Plaintiff, in its affidavits, states that it is engaged in the sale and distribution of quality merchandise, which has an international and national reputation for superb craftsmanship and design. Indeed the name "Gucchi" has become synonymous with that which is chic or elegant.
To enhance the uniqueness of its goods, Gucci Shops developed a number of "signatures." Two of these trademarks are the subject of this proceeding. The first, the name "GUCCI", has been used in the United States since 1953 and was registered in 1969 for use on such classes of articles as pocketbooks, travel and duffel bags, attache' and toilet cases. The other, the Gucci stripe consisting of the red band bounded by a green band on each side, has been placed on numerous items sold by the plaintiff in the United States since 1963. These two marks, when used in conjunction with each other, clearly identify the product with the plaintiff.
/ In fact, the marks were selected to associate particular merchandise with the plaintiff's founders. The trademark "GUCCI" is the name of the family that founded plaintiff, and the stripe is taken from the family flag.
The statutory test of infringement on a registered trademark is whether use of the imitating mark "is likely to cause confusion, or to cause mistake, or to deceive." 15 U.S.C. § 1114(1).
As to the registered trademark "GUCCI,"
/ except for the addition of the letter "H," defendant's mark is identical. More importantly, defendant's mark is placed on a similar item. Though Fashioncraft carefully stresses that it manufactures a "diaper bag," the article closely resembles an ordinary travel or tote bag, one of the items upon which plaintiff places the trademark "GUCCI" in conjunction with the Gucci stripe. It is not inconceivable that at a glance, the "GUCCHI" mark on what appears to be a tote bag could mislead members of the public into believing that the plaintiff has allowed its mark to be copied or that plaintiff is somehow associated with the manufacture, promotion, and sale of the "diaper bag."
Additionally, the words "GUCCI" and "GUCCHI" are identical when pronounced. Phonetic similarity is another factor to be considered in determining the likelihood of confusion. Grotrian, Helfferich, Schulz, Th. Steinweg Nachf. v. Steinway & Sons, 523 F.2d 1331, 1340 (2d Cir. 1975).
Even if, as defendant Fashioncraft argues, no one could possibly confuse the diaper bag with the Gucci tote or travel bag, the use of the mark "GUCCHI" with the mark "GOO" on an item similar to a tote bag indicates an intent to "poke fun at" or riducule plaintiff. The fact that the offending product was intended only as a joke is of no consequence. A well-known registered trademark such as "GUCCI" may still be protected from such ridicule by a preliminary injunction. Coca-Cola Co. ...