Foley Secures Trademark Victory For Buccellati

02 May 2014 Media Contact: Jill Chanen News
Foley is pleased to announce that the firm secured a trademark victory on April 22, 2014 for its client Buccellati, a world renowned Italian jeweler using the BUCCELLATI trademark.

Milan-based luxury brand Buccellati Holding Italia SpA, its New York subsidiary Buccellati, Inc. and their predecessor companies have been using the BUCCELLATI trademark in the United States for more than 60 years. The brand is widely recognized as representing the best in Italian craftsmanship and design, and its pieces are housed in the permanent collections of museums around the world, including the Smithsonian. Recently, Buccellati has captured attention with the launch of several new product lines, including a first-ever collection of engagement rings, and innovative technology products such as one-of-a-kind jeweled iPhone and iPad cases and a bespoke watch service.

In 2013, Buccellati filed suit for trademark infringement and related causes of action in the U.S. District Court for the Southern District of Florida against Laura Buccellati, the American granddaughter of its Italian founder, and her eponymous Florida company Laura Buccellati, LLC. The defendants — who are wholly unaffiliated with the older Italian company – were selling handmade Italian leather handbags and high-end fashion accessories under the infringing mark LAURA BUCCELLATI. Buccellati claimed that the defendants used the infringing mark, along with clever slogans such as “a jewel of a bag,” to falsely imply an association with the high-end jeweler. As Buccellati noted in its Complaint, the defendants’ efforts played on Laura Buccellati’s family heritage to give the (false) impression that the “defendants’ handbag endeavor is an extension, or new division, of the Buccellati company.”

A successful partial summary judgment motion argued earlier this year knocked out more than a dozen of the Laura Buccellati parties’ affirmative defenses and counterclaims, setting things up nicely for trial, which took seven days. The jury heard from Buccellati’s Italian President and chief designer Andrea Buccellati, U.S. CEO Alberto Milani and European CEO Thierry Andretta, who all emphasized the strength of the historic brand and the potentially irreparable harm that could be caused by defendants’ infringement. Buccellati’s witnesses also recounted multiple instances of confused consumers and professionals, across the country, who have already inquired about whether there is a connection between Buccellati and the defendants.

The jury deliberated just under three hours before finding that use of the LAURA BUCCELLATI trademark was likely to cause consumer confusion. Judge Michael Moore later entered final judgment against Ms. Buccellati and her company for trademark infringement, unfair competition, false designation and false description of fact, under federal and Florida state law. Buccellati is scheduled to submit a proposed permanent injunction by May 7, 2014.

“Through its finding that confusion is likely, the Miami jury validated Buccellati’s exclusive use of its well-known, incontestably registered federal trademark,” said Chicago-based Foley & Lardner Intellectual Property partner Jami A. Gekas, who tried the case for Buccellati. Gekas added that “although the Laura Buccellati company’s sales to date have been lackluster, the jury obviously recognized the significant future harm to Buccellati if the defendants’ infringement is not stopped." In a similar vein, Buccellati executive Andrea Buccellati confirmed that the company is “very pleased” with both the win and the work of its legal team, and claimed that the company will continue to aggressively enforce its valuable trademark rights in the United States. “We have exciting plans for our brand, including the opening of new Buccellati stores in the U.S. in the near future, so we appreciate that this legal dispute has been successfully resolved,” continued Mr. Buccellati.

The Foley team representing Buccellati at trial included Ms. Gekas and Miami associate Andrea I. Gonzalez. Serving as trial co-counsel were Rory Radding and H. Straat Tenney of the New York office of Edwards Wildman Palmer, along with local Miami counsel Jaime Rich Vining of Friedland Vining PA. Also appearing as counsel of record for Buccellati was Perla M. Kuhn of Fox Rothschild.

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