An attorney for the U.S. Patent and Trademark Office (“USPTO”) still is not getting behind Off-White’s quest to register the red zip tie that it uses on its buzzy garments and accessories as a trademark. After going back and forth with counsel for the wildly-popular streetwear brand ever since it filed an application for registration for the mark back in July 2018, a USPTO examiner has maintained her preliminary refusals to register the red zip tie mark on the basis that it is functional and not distinctive, and has a few questions for the brand.
In a third Office Action dated May 7, USPTO examining attorney Verna Ririe stated that in order “to permit proper examination of the application, [Off-White] must submit additional information about the use of the proposed mark on the goods and the nature of the proposed mark,” and set out a number of questions for the brand. In addition to inquiring about how exactly Off-White uses the red zip tie on its products, and whether “anything is printed or imprinted on the red tag before it is provided to consumers,” Ririe wants to know how “the shape of [Off-White’s] tag differ[s] from the shape of other zip ties” in the market, and “what features [Off-White’s] tag has that differ from other zip ties.”
(If the zip tie comes with the Off-White name on it, for instance, that would make it quite a bit easier for the brand to argue that it is different from other versions of the zip tie that are currently being offered up by others, and thus, serves as an indicator of a single source; although, at the same time, such a declaration would limit the brand’s rights in the zip tie to ones that include explicit Off-White branding, such as its name, and thus, would not extent to the much broader mark – “a zip tie with a substantially rectangular end, all in the color red” – that Off-White claims in its trademark application).
More than merely setting out the questions that she has for Off-White, Ririe withdraws her refusal on the basis that “the proposed mark is a non-distinctive color mark” (a mini win for the brand), while maintaining two refusals from her earlier Office Actions, despite Off-White’s argument against them. She has opted not to withdraw her refusal to register the zip tie mark because it is (allegedly) functional, and also because it is “a nondistinctive product design or nondistinctive features of a product design without sufficient proof of acquired distinctiveness.”
In terms of the functionality refusal, which is an absolute bar to registration, since “functional matter cannot be protected as a trademark,” Ririe shoots down the argument that Off-White made (in response to her October 2019 Office Action) that its use of the red zip tie is “neither absolutely necessary nor indispensable to the purpose of [Off-White’s] products,” and instead, is used “solely as an indicator of source” of the goods on which it appeared (i.e., the zip tie acts as a trademark).
Unpersuaded by that argument, Ririe claims that similar ties “are used on a variety of goods as a means of conveying information [like] price, weight, size, or providing a function, such as binding things together or security.” With that in mind, she says that “tags like those displayed in the mark drawing are purchased for the function they provide,” and thereby, upholds her refusal to register the zip tie on functionality grounds.
Moving on, Ririe claims for a second time that the zip tie is “a nondistinctive product design … without sufficient proof of acquired distinctiveness,” meaning that it is not automatically capable of identifying the source of the product upon which it is used. She points to similar zip ties available for sale on Amazon and other sites “as additional evidence of the non-distinctive nature of the [ties].”
Counsel for Off-White previously argued that the brand’s use of the red zip tie had amassed the requisite level of secondary meaning in the minds of consumers to function as a trademark (even if it is not inherently distinctive) as a result of widespread media attention, advertising, and sales. It argued that the zip tie has become so well known that “when consumers see [it] affixed to [Off-White’s] goods, they immediately understand the product to have originated with [Off-White].” Proof of that, according to the brand: the fact that “many consumers who purchase [Off-White products] choose to leave [the zip tie] affixed to the outside of the product, even though it could be easily removed.”
In addition to making its case for secondary meaning, Off-White took issue with an additional point in its March 2020 response to the non-distinctive configuration refusal in Ririe’s prior Office Action, arguing that the zip tie is not actually part of any of its product designs, but instead, “is more properly classified as product packaging,” which is significant, as product packaging can be inherently distinctive, thereby, removing the need to establish acquired distinctiveness (via secondary meaning).
Ririe does not speak to that point in her letter, but presumably, will address it after receiving Off-White’s answers to her questions. In the meantime, she has maintained her rejection of the mark on non-distinctive configuration grounds.
The latest official action from the examining attorney follows from an exchange of letters that has been underway between the USPTO and Off-White’s counsel since the wildly famous fashion brand first filed its application for registration for the zip tie in July 2018. Known for its in-demand streetwear offerings, from expensive diagonally-striped and quotation mark-flanked apparel and accessories to buzzed-about collaborations with the likes of Nike and Ikea, Off-White has been working overtime to amass a sizable collection of trademark registrations.
Counsel for the 8-year old brand, which routinely lands atop fashion discovery site Lyst’s quarterly “hottest brands and products” rankings, has filed trademark applications for registration for everything from “Off-White” word marks for use apparel, accessories, homewares and fragrances, among other things, and its diagonal stripes mark to stylized versions of the word “OFF” and its particular use of quotation marks, the latter of which we have covered at length.
The strategy is hardly an unchartered one. Given that the most established forces in fashion are, more or less, in the business of leveraging their well-known names and various logos in order to sell products and drive revenue (hence, the largely logo-dominant nature of many of their offerings), their brand names and logos are some of their most valuable assets. With that in mind, these brands – whether it be Louis Vuitton and Chanel or Nike and adidas – maintain strong trademark rights and sweeping arsenals of registrations to protect them. And in some ways, it appears as though that is exactly what Off-White is doing.
To a large extent, since the Off-White’s apparel and accessories that make it to retail (as distinct from what it shows on the runway) are not earth-shatteringly different than other brands’ hoodies or rival companies’ sneakers, which is true for so many brands (there are only so many ways to make a t-shirt or a crossbody bag), a large part of the draw for consumers is the brand’s name, its various logos, and the goodwill that comes along with them, particularly given Off-White’s tie to Abloh, a bona fide tastemaker and fashion industry influencer, and his hordes of celebrity fans.
In that way, his reliance of trademarks as a selling point for his products is not all that different from the models of Louis Vuitton, for instance, where he is the menswear artistic director, or other similarly-situated luxury names, and his quest to amass trademark registrations falls neatly in line with that.