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Image: Off-White

An ongoing scuffle between Off-White and Walker Wear is no longer limited to the litigation that the latter initiated in a New York federal court this summer in which it is accused Off-White of trademark infringement and dilution in connection with the sale of a “WW” emblazoned jacket. Taking the matter to the U.S. Patent and Trademark Office (“USPTO”)’s Trademark Trial and Appeal Board (“TTAB”) by way of a newly-filed opposition proceeding, Off-White is looking to block the registration of a stylized Walker Wear logo, arguing that it “has been harmed” by Walker Wear’s claim that it maintains rights in the mark, and will similarly be damaged if the USPTO agrees to register the mark. 

In the opposition that it lodged with the TTAB on October 25, Off-White claims that Walker Wear LLC’s application for the “WW XXL ATHLETIC WALKER WEAR” mark (Ser. No. 90592001) should be blocked for a number of reasons, including because Walker Wear LLC misrepresented the ownership of a separate – but related – registration (Reg. No. 3479413) for a stylized “Walker Wear” mark by attributing it to Walker Wear LLC when the company’s founder April Walker “is and has always been the title owner of the registration.” 

For a bit of background, the stylized “Walker Wear” mark is relevant here, as the USPTO issued an Office Action in response to Walker Wear LLC’s application for the “WW XXL ATHLETIC WALKER WEAR” mark in October 2021 with a number of refusals. Among the bases for refusal: Likelihood of confusion with the stylized “Walker Wear” mark, which was registered to April Walker back in 2008 for use on “sportswear clothing.” Pushing back against the Office Action, Walker Wear LLC alerted the USPTO examining attorney that there is no likelihood of confusion at play, as the “Principal/Signatory” of the “WW XXL ATHLETIC WALKER WEAR” mark “wholly owns” the registration for the stylized “Walker Wear” mark, and thus, “there is unity of control.” 

Walker Wear trademark application

Counsel for Off-White is now using this assertion by Walker Wear LLC to call foul, arguing in its notice of opposition to the “WW XXL ATHLETIC WALKER WEAR” mark that Walker Wear LLC “knowingly made this false claim of ownership with the intent that the USPTO would rely on it and to induce the USPTO to withdraw the ‘413 Registration as a bar to registration and to approve” its application for the “WW XXL ATHLETIC WALKER WEAR” mark. In other words, Off-White claims that by telling the USPTO that the two marks have the same principal owner when one is registered to Walker Wear LLC founder/owner April Walker and the other lists Walker Wear LLC as the owner, the company engaged in fraud on the USPTO. 

Given that this “false claim of ownership … was material, as it allowed the Examining Attorney to withdraw the registration [of the ‘Walker Wear’ mark] as a bar to the registration and to approve Walker Wear LLC’s [WW XXL ATHLETIC WALKER WEAR] mark for publication,” Off-White argues that its opposition should be sustained and the USPTO should refuse to register the “WW XXL ATHLETIC WALKER WEAR” mark. 

In case that is not enough, Off-White argues that the “WW XXL ATHLETIC WALKER WEAR” mark should not be registered, as Walker Wear has “abandoned any and all rights it may have had in [the] mark,” which it claims that it first began using in May 1994. Since that date, Off-White contends that Walker Wear has “discontinued its use in commerce of [the] mark with intent not to resume such use.” Counsel for the late Virgil Abloh’s brand maintains that Walker Wear failed to use the mark in commerce “for at least three (3) consecutive years after its alleged first use in commerce,” which is significant, as a trademark holder may lose its rights in a mark if it cannot show consistent and continuous use of that mark on the claimed goods/services. 

Off-White jacket and Walker Wear sweatshirt
Off-White’s bomber (left) & a Walker Wear sweatshirt (right)

And still yet, Off-White asserts that Walker Wear’s application is otherwise void, as the company, itself, was “formed well after [its] alleged date of first use [of the WW XXL ATHLETIC WALKER WEAR mark] in commerce.” Since Walker Wear “could not have used [the] mark in commerce prior to formation,” Off-White argues that Walker Wear filed the application “in the name of the wrong party,” thereby, invalidating the application. 

With the foregoing in mind, Off-White is looking to block the prospective registration of the “WW XXL ATHLETIC WALKER WEAR” mark. In addition to potentially enabling it to chip away at the strength of the claims that Walker Wear made against it in the ongoing lawsuit, this move by Off-White could put pressure on Walker Wear to look to settle the suit. (Walker Wear and Farfetch alerted the court in December 2021 that they had reached a settlement and the claims against the retailer were subsequently dismissed.)

The case has already been cut down by Judge Laura Taylor Swain of the U.S. District Court for the Southern District of New York, who sided with Off-White in September and agreed to dismiss the federal trademark dilution claim and one of the New York General Business Law claims that Walker Wear lodged against Off-White, along with its stockists Saks and Farfetch, in August 2021. 

UPDATED (Dec. 4, 2022): While the opposition appears to still be underway, with Walker Wear filing its answer on Dec. 4, the lawsuit that Off-White waged against Walker Wear has been settled. In an order of dismissal on Dec. 2, the court states that “attorneys for the parties have advised the Court that this action has been or will be settled. Accordingly, it is hereby ORDERED that this action is dismissed with prejudice and without costs to any party, but without prejudice to restoration of the action to the calendar of the undersigned if settlement is not achieved within thirty (30) days of the date of this Order.”