THE FASHION LAW EXCLUSIVE — You know the quotation marks that appear on some of Off-White’s products around words like “shoelaces” … on shoelaces, or phrases like “for walking” on footwear? How about the various red zip ties that it attaches to its sneakers and accessories? Virgil Abloh’s brand – which is known for co-opting the obvious, turning it into streetwear gold, and then, somewhat ironically seeking legal protection for it – is boldly claiming exclusive trademark rights in those quotation marks and zip ties for use on garments and accessories. More than that, in a string of new lawsuits, counsel for Off-White has taken things a step further and is suing others for using them without its authorization.
According to the most recent case, which was filed in federal court in Los Angeles on Monday, Rastaclat is on the hook for making/selling bracelets that bear a red zip tie and quotation marks around the word “shoelaces.” The complaint claims that the company’s $18 bracelets are being “sold under the name ‘Off-Clat’ and/or ‘Off-Clat c/o Rastaclat’” by the brand and various retailers, including Zumiez, The Finish Line, and Amazon.
Off-White alleges that the bracelets “violate [its] exclusive rights” in its registered “Off-White” trademark, as well as in the quotation marks and red zip tie marks. While the brand does not have federal registrations for the latter two marks, its counsel asserts in the complaint that the 6-year old brand has amassed “significant common law trademark” rights in these otherwise completely ordinary elements.
Those common law (i.e., state law) trademark rights are borne from its extensive “marketing, promotional and distribution efforts [of products bearing the quotation marks and/or zip tie], as well as the word-of mouth-buzz generated by its consumers,” Off-White’s counsel asserts. More than that, “Retailers, retail buyers, consumers and members of the public have become familiar with Off-White products and Off-White marks and associate [these things] exclusively with Off-White.”
According to Off-White, the Rastaclat bracelets are likely to “confuse consumers into believing that [they] are Off-White products, and as a result, it is asserting claims of trademark infringement, false designation of origin, and unfair competition.
The case against Rastaclat joins several other currently-pending actions that Off-White has initiated in recent months against sellers of lookalike wears, and in which it asserts common law rights in the red zip tie.
Meanwhile, a trademark application for registration for the red zip tie that counsel for Off-White filed in July 2018 has been pending before the U.S. Patent and Trademark Office (“USPTO”). In December, the U.S. trademark body preliminarily rejected Off-White’s application, which is seeking registration for “a red zip tie” for use on “tops; bottoms; headwear; footwear. ”
According to the USPTO’s first office action, the red zip tie mark is rife with potential problems. For one thing, it is “confusingly similar” to at least two already-registered trademarks. More than that, the configuration of the zip tie is functional, and “functional matter cannot be protected as a trademark.” Still yet, Off-White’s use of the color red on the zip tie, which it claims as part of the trademark, is “not inherently distinctive,” meaning that it is not automatically, on its own, capable of identifying the source of a product. As such, Off-White needs to show that the red zip ties have acquired distinctiveness in the mind of the ordinary consumer, or that the average consumer associates with red tie with a single source.
Off-White’s counsel has not yet formally responded to the USPTO office action.
By way of both common law and federal protections, trademark law covers any word, name, symbol, design, color, or any combination thereof, used in commerce to identify and distinguish the goods of one manufacturer or seller from those of another and to indicate the source of the goods. Unlike patent law, for instance, for which “novelty” is a prerequisite for protection, there is no such requirement for trademarks. Instead, the measure is whether or not there is a “likelihood of confusion” between the proposed trademark (Off-White’s use of quotation marks around a single word or a few words and its use of red zip ties) and another’s already existing mark.
With that in mind and assuming that Off-White can show its use of the quotation marks and zip ties is, in fact, source-identifying (and not merely decorative in nature), Off-White might have a valid claim that at least some portion of the consuming public has come to associate the red zip tie and the use of quotation marks with its brand, something it would have to show by way of a combination of factors, including advertising expenditures, sales figures, third party media attention, etc.
As for whether the brand will actually be able to amass registrations for these marks (to date, Off-White has not filed an application for registration for its particular uses of the quotations) or whether it will prevail in court if challenged by any of the defendants, that is another matter entirely. The USPTO, for one, is not convinced.
*The case is Off-White LLC v. RASTACLAT LLC d/b/a RASTACLAT; ZUMIEZ INC.; and THE FINISH LINE INC. d/b/a FINISH LINE, 2:19-cv-03518 (C.D.Cal).