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Image: Brooklyn Lighthouse

THE FASHION LAW EXCLUSIVE — Virgil Abloh’s Off-White is taking on a children’s clothing brand in a newly-filed, multi-million dollar lawsuit. According to a complaint filed by Off-White in a New York federal court on Wednesday, Brooklyn-based Brooklyn Lighthouse is “willfully and in bad faith” selling products that make use of Off-White’s “[trade]marks and/or marks that are confusingly similar to the Off-White [trade]marks and/or are identical or confusingly similar to the Off-White products.”

Off-White alleges that as a result of “the fame and incalculable goodwill associated [with its brand] and of the popularity and success of [its] products,” it has become a “target for unscrupulous individuals and entities that wish to exploit the goodwill, reputation and fame that Off-White has amassed.” In particular, the brand claims it became aware this summer that New York-based store Brooklyn Lighthouse “in bad faith adopted the Off-White Marks” and has been using them on various children’s products. 

After its counsel purchased 2 counterfeit products from Brooklyn Lighthouse’s website in August, Off-White claims that its counsel sent a cease and desist letter to the defendant on September 13, 2018, in which, “among other things, [it] notified the defendant of its infringing actions, set forth evidence of the same and demanded that defendant cease engaging in its infringing actions.”

Some of the infringing wares from Brooklyn Lighthouse (image: TFL)

Following back and forth between Off-White’s counsel and Brooklyn Lighthouse, the latter of which describes itself as “a children’s apparel shop founded by a mom of two boys,” Off-White filed suit, alleging that not only is the childrenswear brand running afoul of trademark law by selling products bearing its diagonal line logo and arrow trademark, but “offering for sale and/or selling products that infringe other well-known brands, including, but not limited to, Champion, Supreme and Gucci.”

By selling the counterfeit products at issue, Brooklyn Lighthouse has “caused, and will continue to cause, confusion, mistake, economic loss, and has and will continue to deceive consumers, the public and the trade with respect to the source or origin of the counterfeit products, thereby causing consumers to erroneously believe that such counterfeit products are licensed by or otherwise associated with Off-White, thereby damaging Off-White,” the 5-year old Off-White brand claims.

In setting forth claims of counterfeiting, trademark infringement, and false designation of origin, as well as various claims under New York State law, Off-White is seeking damage for the irreparable harm that Off-White “has sustained, and will sustain, as a result of the defendant’s unlawful and infringing actions” plus treble damages in the amount of a sum equal to three times such profits or damages, or $2,000,000 “per counterfeit mark per type of goods sold, offered for sale or distributed and reasonable attorneys’ fees and costs,” whichever is greater.

Moreover, Off-White is seeking injunctive relief, which would immediately and permanently bar the defendants from selling products bearing its trademark and thereby cause further “substantial and irreparable injury, loss and damage to Off-White and its valuable Off-White marks.”

It is worth noting that Off-White, which is not in the business of making kids clothing (yet?), is apparently not taking issue with the mini hoodies being sold by Brooklyn Lighthouse that make use of Off-White’s signature quotation marks, with which it has been adorning an increasing number of its wares.

Meanwhile, Off-White is in the midst of litigation after being sued by Norwegian sportswear brand, Helly Hansen, which accused the brand of intentionally infringing the stripe mark that it began using – and has consistently used – in the U.S. more than 40 years ago.

A representative for Brooklyn Lighthouse told TFL that they have no comment on the suit.

 * The case is Off-White LLC v. Breukelyn Threads, LLC, 1:18-cv-11349 (SDNY).