THE FASHION LAW EXCLUSIVE - Off-White is not keeping its battle against Paige stateside. After filing a trademark suit against the denim brand in April, asking a New York federal court to hold that its diagonal stripe trademark is not infringing Paige’s own striped mark, Virgil Abloh’s company is now trying to knockout at least one of Paige’s trademarks in Taiwan, where Off-White maintains a small arsenal of trademark registrations of its own (although not for the striped mark).
According to documents filed with the Taiwan Intellectual Property Office (“TIPO”) by Off-White in May, the buzzy streetwear-meets-high fashion brand is seeking to have Paige’s multi-striped trademark cancelled in an array of classes of goods – namely, class 3, which covers cosmetics, class 18, which extends to leather goods, and of course, class 25, which covers clothing and accessories. The cancellation proceeding initiated by Off-White claims that Paige has failed to actually use its mark in commerce, and as a result, it has forfeited its rights in the mark.
Note: Trademark law entails an underlying "use it or lose it" policy, meaning that in order to acquire and maintain trademark rights in the United States and in a number of other countries (save for "first to file" jurisdictions), a party must make actual, consistent use of its in commerce.
The proceeding in Taiwan appears to be part of the larger battle between the two parties. Per Off-White's original complaint, which was filed in the U.S. District Court for the Southern District of New York, 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 in the U.S., arguing that it is too similar to Paige's pre-existing trademarks. According to Paige’s petition for cancellation with the U.S. Patent and Trademark Office ("USPTO"), 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].”
That matter has been suspended for the time being, pending an outcome in the case at hand. As noted by the USPTO’s Trademark Trial and Appeal Board, “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.”
UPDATE (6/21/2017): Per WWD, Paige has asked the court to dismiss Off-White’s April lawsuit, alleging that because it never alleged “or even suggested” that Off-White’s trademarks infringed its own rights, there is no justiciable case or controversy for the court to decide.
Paige further asserts in its filing, “In fact, as Paige has repeatedly informed the plaintiff [that] it does not object to and will not sue the [Off-White] based on any of the uses of the [Off-White] marks of which Paige is presently aware. Further, while it 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. Put simply, there is no dispute. There is no legal ‘battle.’ There is no case or controversy. And there is no federal court jurisdiction.”