For almost two years, Off-White and Paige Denim have been locked in a multi-faceted fight over stripes, one that saw legal counsel for the 14-year old American denim company file three separate proceedings with the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (“TTAB”) one day in March 2017. The purpose of all three: to prevent Off-White from enjoy federal trademark protection for the diagonal stripe trademark that streetwear aficionados and high fashion fans, alike, have come to associate with the buzzy brand that Virgil Abloh launched in 2012.
Right around the time that Abloh was sending his Fall/Winter 2017 Off-White collection down a runway lined with makeshift Birch trees and autumn leaves as part of Paris Fashion Week, Paige Denim’s attorneys were busy initiating proceedings with the TTAB in an attempt to block the federal registration of two of Off-White’s multi-striped trademarks – applications that Off-White’s counsel had filed in January 2017 for a trademark consisting of “fifteen alternating parallel diagonal lines of varying sizes forming the shape of a square.”
It was the precise mark that had helped put Off-White on the map and that was stamped all over its meteoric rise to fashion – and cultural – fame among hip youths across the globe.
One of Off-White’s trademark applications cited use of the mark on cologne, soaps, and hair products, among other similar products; the other was for use on bedding. Trademarks, after all, are registered (and thus, filed for) in different classes of goods and/or services cited by the filing party. These applications – which asserted that Off-White had not yet begun using the mark on these types of goods just yet but intended to – foreshadowed what was to come from Abloh, namely, a collaboration with Byredo for an Off-White branded fragrance, and a partnership with Swedish home giant, Ikea, for everything from chairs and shelves to bags and rugs.
But Paige was not merely looking to oppose the two pending trademark applications. There was more at stake than that. Its counsel wanted to stomp out the registration that Off-White had been issued just a month before for use of the same 15-striped mark on both men’s and women’s garments, and bags, which is, of course, Off-White’s bread and butter.
According to Paige, which adorns the left back pocket of its denim with 9 small diagonal lines and maintains a number of federal registrations for that mark, Off-White’s trademark is too similar to its own striped mark. To be exact, Paige asserted that Off-White’s trademark “so resembles [Paige’s] [trade]marks as to be likely to create a false designation of origin and false or misleading representation of fact that is likely to cause confusion, or to cause mistake, or to deceive as to an affiliation, connection, or association between [Paige] and [Off-White].”
The oppositions were part of a larger legal showdown between the two, which got its start in early 2017 when Paige’s counsel sent a letter to Off-White, taking issue with some uses of its 15-stripe trademark. According to a lawsuit that Virgil Abloh’s brand filed against Paige in a New York federal court in April 2017, despite “engag[ing] in nearly three months of communications in good faith” in an attempt to settle the matter out of court, a “settlement could not be reached in light of [Paige’s] over-reaching requirements as to future restrictions on Off-White’s right to use the Off-White diagonal marks.”
In its complaint, Off-White asked the court to determine that its striped marks do not infringe Paige’s striped marks. In addition to a declaratory judgment – a binding judgment from a court defining the legal relationship between parties and their rights in the matter before the court – Off-White asked the court to invalidate an array of Paige’s trademark registrations in connection with its 9-striped mark, arguing that by failing to use the marks within the past three years, Paige had abandoned them.
An example of Off-White mark (left) & Paige’s mark (right)
That suit was relatively short lived, with New York District Judge Jed S. Rakoff siding with Paige, which had asserted in response to Off-White’s suit that it “has repeatedly informed [Off-White] that it does not object to and will not sue [Off-White] based on any of the uses of the [Off-White] marks of which Paige is presently aware.” Paige’s counsel further states, “While [Paige] has proposed settlement to avoid the potential for future disputes, Paige has never made any settlement demand that would interfere with or disrupt the current uses of [Off-White’s] marks.”
Persuaded by Paige’s alleged lack of threats of litigation, Judge Rakoff dismissed the case in June 2017, holding that Off-White had not presented a real controversy that required court intervention. Instead, the case at hand centered on a arguments surrounding a “hypothetical scenario,” he asserted.
The case’s dismissal turned attention back to the proceedings before the TTAB, where Paige’s cancellation had been put on hold until the lawsuit involving some of the trademarks had been resolved. “It is the policy of the Board to suspend proceedings when the parties are involved in a civil action which may be dispositive of or may have a bearing on the Board case,” the TTAB held in April 2017. Also still on table table: the fate of Paige’s two opposition proceedings.
That summer, in response to an inquiry from the TTAB as to the status of the suspension, Paige’s counsel stated that it and Off-White “are engaged in settlement discussions and have agreed to suspend each of the [three] proceedings to allow the parties to pursue those discussions.”
Despite failed attempts at settlement in the past, this time around, the parties were able to come to a resolution. It is unclear what, exactly, the parties’ settlement entails. There is a chance that Off-White has made some concessions as to the ways in which it will use its marks in exchange for Paige concluding any cease and desist demands and its withdrawing of the trademark oppositions and cancellations, but that is only speculative.
Off-White’s counsel, Brian Igel of New York-based firm Bellizio + Igel PLLC, said he cannot comment on the settlement terms, although it is worth noting that as of now, Off-White’s trademark registration for use of the 15-striped mark on garments and bags still stands (i.e., it has not been cancelled), and the two trademark applications for registration are still pending – waiting for the next pre-registration steps from the U.S. Patent and Trademark Office.
As of now it also seems that the two brands have managed to put their fight to bed. Meanwhile, Paige is expanding into footwear (with men’s shoes to come next fall, according to the brand), and Abloh is continuing his quest for world domination – with a continuing partnership with Nike, a just-completed joint show with Japanese artist (and former longtime Louis Vuitton collaborator) Takashi Murakami, a recently-launched radio station, and the top spot on Lyst’s third quarter brand ranking, which touted Off-White as “the hottest brand on the planet” at the moment.
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