Image: Off-White

Off-White has fallen victim to “a behind-the-scenes marketing consultant to Fortune 500 companies” who is attempting to “profit through litigation from [Off-White’s] meteoric fashion success.” That is what Virgil Abloh’s earth-shatteringly popular fashion brand asserts in response to the trademark infringement and dilution lawsuit that similarly named OffWhite Productions filed against in it July, claiming that Off-White “steamrolled its way over and past [its] superior and senior rights in the Off-White trademark.”

According to its motion to dismiss and corresponding memo, filed on Monday, counsel for Off-White has asked a judge for the Southern District of New York to toss out the case that OffWhite Productions filed this summer in its entirety, asserting that the like-named business-to-business marketing consulting services company has failed to make its case for a number of reasons.

For one thing, counsel for Off-White asserts that “no one is likely to confuse [Off-White’s] jackets, sweatshirts, and other streetwear apparel, or its retail stores with [OffWhite Productions’] business-to-business marketing consulting services,” thereby, giving rise to a lack of trademark infringement, since – at its core – trademark infringement requires not only the use of a similar trademark but a likelihood that consumers will be confused about the source of the parties’ products as a result.

There is very little chance that consumers would confuse the products of Off-White with the services of OffWhite Productions, according to the motion to dismiss, as OffWhite Productions’ “own allegations, on their face, show that the parties are in two distinct lines of business, offering completely unrelated goods and services to different consumers.” OffWhite Productions “is a corporate marketing consultant,” whereas Off-White “by contrast, is a fashion label offering streetwear apparel and other goods for sale to individual consumers … Therefore, it is clear that the parties sell unrelated things in unrelated markets.”

Given such a distinction, “No reasonably prudent consumer would be likely to confuse the two,” Off-White alleges.

More than merely failing on the trademark infringement front, Off-White claims that the plaintiff has not made its case when it comes to trademark dilution. A claim that is distinct from trademark infringement, trademark dilution applies when a famous trademark is used in a way that stands to diminish that trademark’s ability to identify a single source of the products, which is the purpose of a trademark. That is precisely what OffWhite Productions claims is going on here.

The marketing company claims that it has been using its OffWhite mark since the 1990s, and by adopting the same mark some 20 years later, Off-White has “diluted the distinctive quality of [its] OffWhite trademark.” The problem with that, according to Off-White’s counsel? OffWhite Productions trademark isn’t … famous.

In fact, the defendant’s counsel claims that, “there is nothing at all to suggest that [OffWhite Productions’] mark is widely recognized by the general consuming public of the United States as a designation of source of its services.” As such, Off-White’s “retail sales could not possibly dilute [OffWhite Productions] trademark.”

In case that is not enough, Off-White argues that the plaintiff’s “common law trademark dilution” fails because such a claim does not actually exist. “The New York state courts themselves have never recognized a claim for ‘common law trademark dilution,’” the motion asserts, and OffWhite Productions “has been unable to locate any New York state court decision recognizing such a claim under New York law.”

Aside from also taking issue with OffWhite Productions’ unfair competition claim, Off-White argues that the plaintiff is not entitled to treble and statutory damages, as those are only available “in a case involving ‘use of a counterfeit mark,’” and that is not what is going on here. Off-White asserts that OffWhite Productions “makes no allegation … that [Off-White] is attempting to ‘trick’ consumers into believing that in purchasing [its] fashion products, the consumer is purchasing the ‘genuine article’ of [OffWhite Productions] marketing services,” which is at the core of counterfeiting.

With the foregoing in mind, Off-White has asked the court to throw OffWhite Productions’ case out once and for all.

As Judge Paul Englemayer stated in an order on Tuesday, OffWhite Productions now has 21 days to amend its complaint (should it chose to do so) to address the deficiencies pointed out by Off-White.

*The case is OffWhite Productions, LLC, d/b/a OffWhite Co., v. Off—White LLC, 1:19-cv-06267 (SDNY).