After being accused of hijacking another brand’s name and confusing consumers in the process, Off-White has landed a win. In an August 20 decision, Judge Paul Engelmayer of the U.S. District Court for the Southern District of New York dismissed the trademark infringement and unfair competition case that OffWhite Productions LLC, a New York-based a multi-disciplinary design and creative agency that does business as OffWhite Co., filed against Virgil Abloh’s fashion brand Off-White in July 2019. The court’s reason for tossing out the matter in its entirety? OffWhite Productions failed to properly plead an essential element of its trademark case.
In response to Off-White’s November 2019 motion to dismiss, which centered largely on its argument that OffWhite Productions’ initial and amended complaints were “intentionally vague” and failed to adequately allege that consumers are likely to confuse Off-White’s goods – including everything from garments and accessories to fragrances and homewares – with those of OffWhite, namely, a “set of functional construction tools designed for children,” Judge Englemayer held this week that OffWhite Productions’ “bare-bones allegations” are not enough.
“Other than its ‘set of functional [children’s] construction tools,’” OffWhite Productions does not include “any details as to the ‘OFFWHITE branded products’” that it has allegedly offered up since 2004, the Judge asserts. At the same time, the plaintiff did not “offer specifics [in either its original complaint or its amended complaint] as to any of the ‘innovative consumer products,’ including ‘items such as housewares and toys’ that [it says that it] has ‘most recently’ ‘brought to market’ ‘under the OFFWHITE trademark.’”
Moreover, the court held that the trademark registration for “OFFWHITE CO.” that OffWhite Productions was granted in December 2014, which it “filed a decade after the [complaint] alleges OffWhite began producing ‘OFFWHITE’ branded products,” similarly does not “shed light on these products,” which are at the core of the company’s claims against Off-White. Instead of making “any reference to branded products or durable consumer goods,” the trademark registration “focuses on OffWhite’s business-to-business marketing and brand consulting services.”
Still yet, OffWhite Productions “does not plead any facts to support its conclusion that consumers are likely to confuse “the origins of its children’s construction tools, on the one hand, and Off-White’s yellow belt [for example], on the other,” according to the court. In fact, the plaintiff’s complaint “does not allege a single instance in which a consumer evinced confusion between these products, for example, in a written or oral communication to OffWhite.”
Ultimately, the court found that OffWhite Productions’ “sparse factual allegations fail to plausibly allege the foundational element of consumer confusion,” which is significant, as likelihood of confusion “is a necessary element of all three claims” that OffWhite Productions lodged against Off-White: federal trademark infringement and false designation of origin, and common law unfair competition under New York law.
(OffWhite voluntarily dismissed its fourth claim, for unfair competition under the Lanham Act, in an earlier stage, and seemingly, its common law trademark dilution claim, as well, after counsel for Off-White argued that “there is nothing at all to suggest that [OffWhite Productions’] mark is widely recognized by the general consuming public of the United States as a designation of source of its services,” and that as a result, Off-White’s “retail sales could not possibly dilute [OffWhite Productions] trademark.” In case that was not enough, Off-White argued that the plaintiff’s “common law trademark dilution” was faulty because such a claim does not actually exist. “The New York state courts themselves have never recognized a claim for ‘common law trademark dilution,’” the brand argued in its original motion to dismiss in September 2019, and noted that OffWhite Productions “has been unable to locate any New York state court decision recognizing such a claim under New York law.”)
For these reasons, the court granted Off-White’s motion to dismiss OffWhite Productions’ case in its entirety, and with prejudice given that “OffWhite has had—and availed itself of—the opportunity to amend its complaint.” Judge Englemayer does state, though, that “for avoidance of doubt, this dismissal does not preclude OffWhite from bringing a separate lawsuit based on products outside the scope of, or events post-dating its [amended complaint] in, this litigation.”
The court’s decision comes just over a year after OffWhite Productions first filed suit against Abloh’s brand on the basis that Off-White co-opted its name and that as a result of Off-White’s “rapid brand growth” and its ever-expanding “range of products and other offerings,” the fashion brand has been “hurdling [sic] headlong into the natural zone of expansion of” the plaintiff’s own OffWhite brand. More than that, OffWhite Productions argued that “consumers making actual purchasing decisions are likely to confuse [Off-White’s] wide variety of goods with those of [OffWhite],” thereby, giving rise to reverse confusion that is likely to “result in the eventual extinction of” OffWhite’s trademark and brand.
In response to its demands that Off-White “cease such infringing conduct,” OffWhite Productions claims that Off-White “refused to alter [its] conduct whatsoever in response to these communications.” Moreover, Off-White’s counsel allegedly “downplayed the significance of this confusion, and advised that his client would not cease its infringement,” OffWhite Productions argued in its complaint, and “has since … proceeded to file additional applications [for various] OFF-WHITE trademarks,” including “an entirely new design incorporating the word ‘OFF’ in a graphic arrangement that is unmistakably similar to a logo used by [OffWhite Productions’] but not registered,” which OffWhite Productions says its rival has done in “spite.”
From the outset, Off-White slammed the suit, arguing that it had fallen victim to “a behind-the-scenes marketing consultant to Fortune 500 companies” that is attempting to “profit through litigation from [Off-White’s] meteoric fashion success.”
*The case is OffWhite Productions, LLC, d/b/a OffWhite Co., v. Off—White LLC, 1:19-cv-06267 (SDNY).