While just about every brand from Ikea and Nike to Rimowa wants to adorn their products with the coveted Off-White striped logo (or quotation marks), there is one company that wants no part of the hype that comes with Virgil Abloh’s buzzy label: Helly Hansen. The Norwegian sportswear brand, which maintains a headquarters in Auburn, Washington, filed suit against Off-White this week in federal court in Illinois, alleging that the brand is intentionally infringing the stripe mark that it began using – and has consistently used – in the U.S. more than 40 years ago.
According to Helly Hansen's complaint, Off-White “has adopted a logo that is confusingly similar to Helly Hansen’s HH Stripe Logo,” and is using that logo on goods that are “the same and/or similar to the goods/services offered by Helly Hansen under its HH Stripe Logo.”
Far from merely a coincidence, Hansen claims that Off-White “adopted the infringing [trademark] with knowledge of, and the intent … to create a false suggestion of an affiliation or connection between [Off-White] and Helly Hansen, where none exists,” and/or “to trade off the goodwill of Helly Hansen and its HH Stripe [mark]," which is protected by a federally registered trademark (no. 1,454,335) for "parallel striping of white and another contrasting color that appears on the shoulder and sleeve of shirts and on the outer seam of the pants."
But even more than that, Helly Hanson claims that Off-White applied for and received at least two federal trademark registrations from the U.S. Patent and Trademark Office based on the allegedly infringing trademark. For instance, Helly Hansen alleges that Off-White’s registration for “nineteen alternating parallel diagonal lines of varying sizes forming the shape of a rectangle” cites “a date of first use of February 17, 2014,” approximately 36 years after Hanson says it began using its “distinctive striped logo” in the U.S.
As a result of the foregoing, Helly Hansen sets forth claims of trademark infringement, unfair competition, and a violation of the Illinois Uniform Deceptive Trade Practices Act, and is seeking monetary damages to be determined at trial, and preliminary and permanent injunctive relief, which would immediately and permanently bar Off-White from using the allegedly infringing logos and require the company to “deliver up for destruction all products, labels, signs, prints, advertisements, and other articles that infringe Helly Hansen's” trademark rights.
Still yet, Helly Hansen wants the U.S. Patent and Trademark Office to cancel two of Off-White’s federal trademark registrations.
Here's my question: Off-White got its start in 2013 and most of its earliest hits were adorned with the striped logo design. Why did Helly Hansen wait so long to sue?
Brian Igel of Bellizio + Igel, counsel for Off-White, told TFL that they “can’t comment on ongoing client matters.”
* The case is Helly Hansen AS v. Off-White LLC, 1:18-cv-04755 (N.D. Ill).