Virgil Abloh’s quotation marks-centric trademark is not getting the registration treatment just yet. On the heels of filing a trademark application for registration for “Product Bag” – quotation marks including – in May 2019 for use on “tops as clothing; bottoms as clothing,” and being shot down by a U.S Patent and Trademark Office (“USPTO”) examining attorney on more than one occasional since, largely on the basis that the mark “does not function as a trademark,” and thus, cannot be registered as one, counsel for Off-White is looking to buy the brand a bit more time.
In a filing on September 1, counsel for Abloh’s Off-White asked the USPTO to withdraw its existing refusals to register the trademark in light of the fact that Off-White has amended its application. The amendment at play: a change to the filing basis from 1(a) – which identifies a mark that is already in use in commerce – to 1(b), which refers to a mark that the filing party has “a bona fide intention” to use (in the not too distant future) but is not using at the time of the application filing. (Use in commerce is relevant, as it is a prerequisite to registration in the U.S.)
In accordance with USPTO protocol, an application-filing party may switch from a 1(a) to a 1(b) basis if the application at issue fails to result in a registration because the mark was not in use in commerce when the application was filed … or because the specimen (i.e., a required sample that shows how the trademark for which the party is seeking a registration is used in commerce) is unacceptable. And that is precisely what Off-White has done, presumably in an attempt to save the application (which will retain the original filing date) in light of issues with the specimen that it submitted to the USPTO, which consists of an actual product packaging bag.
Determining that the “Product Bag” mark does “not indicate the source of [Off-White’s] goods” and does not “identify and distinguish [Off-White’s goods] from [those of] others,” USPTO examiner Drew Ciurpita specifically stated in a final Office Action in March that the mark “as used on the specimen of record, does not indicate the source of [Off-White’s] goods.” Despite counsel for Off-White arguing that the brand’s use of quotation marks “alters the commercial impression of the wording in the mark by denoting irony,” thereby, enabling it to act a source-identifier, Ciurpita determined that such an argument “is not persuasive.”
Instead, Ciurpita stated that the use of quotations surrounding the words “PRODUCT BAG” when such a mark “appears on a product bag, would not change the meaning of the wording … as it is a clear reference to the bag itself.” Moreover, he asserted, “The relevant public is not likely to infer irony attached to the wording “PRODUCT BAG” where this wording is written on a product bag and, therefore, has a literal and self-referential meaning.”
The examining attorney was similarly not persuaded by Off-White’s argument about its use of quotation marks in connection with its offerings more generally, holding that the brand’s “use of quotation marks in other situations is not relevant to whether the applied-for trademark functions as a source indicator of [Off-White’s] goods.” Even with such widespread – and oftentimes, famous – use in mind, it remains true, per Ciurpita, that “the relevant public would not perceive the mark “PRODUCT BAG”, featuring quotation marks, on the product bag as identifying the source of the goods within the bag,” since “the wording “PRODUCT BAG” appears to be referring to the bag itself, rather than the clothing items listed in the identification of goods.”
Against that background, Ciurpita issued a final action in March, prompting counsel for Off-White to try to find another way to land the mark on the USPTO’s Principal Register in furtherance of its larger approach to fashion, which includes selling products by leveraging symbols that are easily-identifiable to its core base of super-fans – from quotation marks to red zip ties – and banking on the goodwill that these symbols communicate to consumers.
This approach falls neatly in line with what big brands have done for decades with their own – albeit slightly more conventional marks – such as logos and monograms. Instead of selling luxury products, themselves, most established brands are more realistically trading on intellectual property rights, namely, trademarks and their significance to the consuming public. And this is more-or-less what Off-White is doing, as well. However, instead of relying exclusively on conventional word marks and logos (it does use and have registrations for those), it has arguably taken the notion of what has traditionally acted as a source-indicator and flipped it on its head for the Instagram generation of consumers. Hence, the recurring use of things like quotations marks, various different arrow graphics, and zip ties. (Off-White is similarly seeking a registration for the red zip tie and for various other marks in connection with its relatively aggressive pattern of trademark filing).
As for the way that Off-White’s counsel is now looking to potentially gain a registration for the “Product Bag” mark, that has seen it amend the application to a 1(b) basis, likely in order to give the brand more time to use “Product Bag” on tops and pants, which are the goods listed on its application. More than that, though, the buzzy brand’s attorney filed a request for reconsideration of the refusal to register with Ciurpita, as well as an appeal to the USPTO’s Trademark Trial and Appeal Board. (Counsel notes in the appeal that he “requests suspension of the appeal pending consideration of the request by the Examining Attorney.”)
As for the “Product Bag” mark, itself, we have previously pondered whether it is part of a larger plot by Off-White and its counsel to ultimately seek greater rights in its use of quotation marks. Chances are, if handed a favorable outcome in connection with the “Product Bag” application, which is proving to be predictably challenging, the brand will likely use it as a jumping off point to claim broader rights in quotation marks, which would prove an interesting endeavor to watch.
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