THE FASHION LAW EXCLUSIVE - Buzzy streetwear brand Off-White has filed a trademark lawsuit against Paige, asking a New York federal court to hold that its diagonal stripe trademark is not infringing the denim brand's own striped mark. According to the lawsuit, which was filed in the U.S. District Court for the Southern District of New York late last week, Paige sent a cease and desist letter to the Virgil Abloh-formed brand in January, demanding that it cease all use of its diagonal striped mark and also withdraw a pending federal trademark application for it.
In addition to a sending a cease and desist letter, Off-White alleges that Paige has initiated cancellation proceedings with the U.S. Patent and Trademark Office, arguing that the Off-White diagonal stripe mark – which received federal trademark protection in February for use in connection with bags and garments, among other things – is “confusingly similar” to Paige's own design mark. Paige alleges that it has used its trademark, which features nine vertically-stacked tilted lines, since it launched in 2005, long before Off-White began using its striped mark in 2013.
Not going down without a fight, Off-White argues that its trademarks, “which are, and/or are intended to be, primarily applied to the Off-White Products themselves and the hang tags and interior labels associated therewith, and the Paige Design Marks, which are primarily only applied as stitching to the back pockets of Paige Jeans, are neither identical, nor are they confusingly similar.”
Also of interest in the complaint – particularly for the Kanye fans amongst us – is the description of the Off-White brand. According to the complaint: “The success of Off-White, the Off-White Brand, and the Off-White Products is largely attributable to Virgil Abloh, the founder of Off-White, who is well known due to, among other things, his work with Kanye West over the years. Abloh sought out to, and did in fact, create a cutting-edge brand that is rooted in current culture, and geared towards youthful consumers.”
It continues on to note: “In particular, the Off-White Brand has been recognized for its distinctive graphic and logo-heavy apparel designs, and specifically, a unique design mark comprised of alternating parallel diagonal lines.” (Note: We took a comprehensive look at Off-White's trademark portfolio, which you can read up on here).
Per Off-White's complaint, the parties attempted to settle this matter out of court, "engag[ing] in nearly three (3) months of communications in good faith, but 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." It seems that the final straw, however, came about in March when Paige filed a petition to cancel Off-White's existing trademark registration, arguing that it is too similar to Paige's pre-existing trademarks.
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 is seeking 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 has abandoned them.
Brian Igel of Bellizio + Igel PLLC, counsel for Off-White, told TFL that he “can't comment on ongoing disputes or client matters.” Paige was not immediately available for comment.
* The case is Off-White LLC v. Paige, LLC f/k/a Premium Denim, LLC, 1:17-cv-2904 (SDNY).