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Image: Off-White

The lawsuit that saw Virgil Abloh claiming legal rights in the quotation marks and red zip ties that have become part of his brand’s design vocabulary has been quietly dismissed. Almost three months after Abloh’s brand Off-White filed the trademark infringement suit against bracelet-maker Rastaclat in federal court in Los Angeles for making/selling bracelets that bear a red zip tie and quotation marks around the word “shoelaces,” the parties have seemingly managed to settle their differences out of court, as counsel for Off-White filed to voluntarily dismiss the case this week.

According to the complaint that counsel for Off-White filed in late April, Rastaclat’s $18 bracelets – which were being stocked by the brand and various retailers, including Zumiez, The Finish Line, and Amazon –“violate [Off-White’s] exclusive rights” in its registered “Off-White” trademark, as well as in the quotation marks and red zip tie marks, the latter of which are the subject of a currently pending trademark application for registration. While the brand does not maintain 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.

As a result of 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 consumers,” Off-White alleged that the red zip tie and its specific use of quotations have developed secondary meaning in the minds of consumers, as required for trademark rights to exist. In other words, Off-White claims, “Retailers, retail buyers, consumers and members of the public have become familiar with Off-White products and Off-White marks and associate [the red zip tie and its specific use of quotations] exclusively with Off-White,” and by making unauthorized use of these marks, Rastaclat’s bracelets are likely to “confuse consumers into believing that [they] are Off-White products” or otherwise connected to or affiliated with the Off-White brand.

In light of Off-White’s voluntary dismissal, a move that almost always follows from an often-confidential settlement agreement reached by the parties outside of court, the allegedly infringing bracelets have disappeared from Rastaclat’s website and the sites of the other defendants. Chances are, in exchange for a swift dismissal of the charges pending against it, Rastaclat agreed to immediately and permanently refrain from selling the allegedly infringing bracelet or any other that might run afoul of Off-White’s trademark rights. Infringement settlements also routinely involve a monetary component paid by the defendant, stemming from its unauthorized use of the intellectual property at play.

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.

As for the status of Off-White’s trademark application for registration for the red zip tie, an examining attorney for the U.S. Patent and Trademark Office (“USPTO”) 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.

In a response dated June 21, counsel for Off-White argued that its red zip tie is far from functional, as the 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.” More than that, Off-White’s counsel pushes back against the USPTO examiner’s consideration of the fact that the Off-White zip tie is “the common configuration for zip ties, which may be used in a variety of  industries including for labeling.” Just because “a product has utility, or that aspects of the product are functional,” Off-White argues, “does not render the configuration unregistrable.”

As such, counsel for the brand requested that the USPTO’s refusal on functionality grounds be dismissed, along with the refusal based on color and likelihood of confusion.

The USPTO will now respond with a second Office Action or permit the application to move forward in the pre-registration process.

*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).