LVMH’s Luxury Ventures investment vehicle has taken a minority stake in budding New York-based brand Aimé Leon Dore. While the terms of the investment, which appears as though it might be the latest deal to have been brokered by Alexandre Arnault, have not been disclosed, LVMH Luxury Ventures typically targets investments ranging from €2 million to €15 million. In a statement on Tuesday, Aimé Leon Dore founder Teddy Santis stated, “LVMH’s vast network of global leaders across the industry and its rich history in growing exceptional storied brands offers a truly unique partnership opportunity to fuel the next chapter of growth for Aimé Leon Dore.”
Growth for Aimé Leon Dore – which was founded in 2014 and has since made its name by way of “sneaker collaborations with New Balance and clothes and accessories inspired by New York City itself, particularly its 1990s hip-hop scene and pick-up basketball culture,” per WWD – is slated to come in the form of new brick-and-mortar outposts, with the brand reportedly planning to open a boutique in London as early as March. At the same time, the almost 8-year-old brand appears to be eyeing endeavors in the metaverse, recently filing trademark applications for registration for Aimé Leon Dore and Café Leon Dore for use in connection with virtual goods and services.
The deal between LVMH Luxury Venture and ALD is noteworthy for at least a couple of reasons: Primarily, it further points to the prowess and potential deal-making power of the younger Mr. Arnault, who is currently in the role of EVP of Product and Communications at Tiffany & Co., and who has had a hand in a number of LVMH transactions in recent years. Beyond that, LVMH’s interest in Aimé Leon Dore appears to be a nod to the influence that a number of relatively young American brands currently enjoy in the market in a way that has not been seen since maybe Ralph Lauren and co. were getting their start several decades ago.
As for LVMH’s investment arm, itself, it was rolled out by LVMH in 2017 with the aim of buying stakes in “luxury companies with sales of between 2 million and 5 million euros, and a high-growth potential.” Spearheaded by Julie Bercovy, who previously served as co-head of LVMH’s M&A department, the Luxury Ventures arm has had its focus, in large part, on the U.S. market from the outset. For instance, it entered into a “partnership” (financial details of the transaction were not disclosed) with New York-based consignment sneaker company Stadium Goods back in February 2018, ultimately off-loading its stake in the company a year later as part of a $250 million acquisition by Farfetch.
It has since taken stakes in New York-based fashion brand Gabriela Hearst, Los Angeles-based lifestyle brand Mad Happy, and New York-based watch media and e-commerce platform Hodkinee, turnkey social selling software company Replika Software, which is based between New York and Paris, and Los-Angeles-based clean skincare brand Versed.
A U.S. federal court has sided with StockX in connection with the proposed class action lawsuits filed against it in 2019 for allegedly failing to safeguard customers’ information and then failing to inform those same consumers after 6.8 million records were hacked from its website, and “instead, tried to hide the fact by telling users to reset their passwords under the guise of ‘system updates.’” The data breach was subsequently revealed by TechCrunch, prompting a number of individuals to file privacy-centric suits against it in courts across the U.S. for “intentionally, willfully, recklessly, or negligently failing to take adequate and reasonable data-security measures to ensure its systems were protected, take steps to prevent and stop the breach from happening, monitor and detect the breach on a timely basis, and disclose to customers the fact that it did not have adequate security systems and practices to safeguard [their] data.”
On the heels of a handful of individual class action lawsuits being combined before a federal district court in Michigan, U.S. District Judge Victoria Roberts granted Detroit-based StockX’s motion to dismiss the consolidated class action and compel arbitration in December 2020 on the basis that the parties are subject to StockX’s terms of service, which “always included an arbitration agreement, a delegation provision, a class action waiver, and instructions for how to opt out of the arbitration agreement.”
However, before the matter could make its way to arbitration, the plaintiffs, two of whom are minors, appealed to the U.S. Court of Appeals for the Sixth Circuit, arguing that the lower court erred in dismissing the case, as there is an issue of fact as to whether four of the plaintiffs accepted StockX’s terms of service. The plaintiffs further claimed that the defenses of infancy and unconscionability render the company’s terms of service, including the arbitration agreement and the delegation provision (i.e., a provision that states that an arbitrator will decide whether the dispute is fit for arbitration), invalid and unenforceable.
Beyond that, the plaintiffs also asserted that regardless of their ages, the arbitration agreement, including the delegation provision, is invalid because it is a “contract of adhesion,” “comprised of boilerplate language, drafted by StockX,” and “lacks the essential element of mutuality,” among other things. In short: the plaintiffs argued that an enforceable agreement does not exist between them and StockX, thereby, making arbitration an improper forum.
The Sixth Circuit’s Decision
In its decision dated December 2, a panel of judges for the Sixth Circuit declined to rule on any of the plaintiffs’ arguments about the validity or enforceability of StockX’s terms. Writing for the court, Judge Ralph Guy stated, “[W]e conclude that a contract exists and that the delegation provision itself” – which states that “the arbitrator . . . shall have exclusive authority to resolve any dispute arising out of or relating to the interpretation, applicability, enforceability or formation of [the arbitration] agreement to arbitrate, any part of it, or of [StockX’s] terms [of service] including, . . . any claim that all or any part of [the arbitration] agreement or the terms is void or voidable” – is valid.
“Such language alone is clear and unmistakable evidence requiring that an arbitrator shall decide the ‘applicability, enforceability,’ or validity of both the arbitration provision and the entire contract,” according to Judge Guy, holding that as a result, “the arbitrator must decide in the first instance whether the defenses of infancy and unconscionability allow plaintiffs to avoid arbitrating the merits of their claims.”
As for the plaintiffs’ challenge of the delegation clause, itself, the court held that they have failed to show that “‘the basis of [their] challenge [is] directed specifically’ to the ‘delegation provision,” as they “have simply recycled the same arguments that pertain to the enforceability of the agreement as a whole.” As a result, the majority determined that the plaintiffs’ challenge to the validity or enforceability of the delegation clause under the infancy defense “is for an arbitrator to decide.” (Judge Karen Nelson Moore dissented, arguing that “a minor who has disaffirmed a contract is not subject to the contract’s delegation provision, [as] arbitration is simply a matter of contract between the parties.”)
With this in mind, the Sixth Circuit upheld the lower court’s decision to dismiss the case and compel arbitration.
The win for StockX is the latest in a sting of cases that “strictly enforce delegation provisions,” according to Squire Patton Boggs LLP’s Ellen Phillips, who points to Swiger v. Rosette, in which a plaintiff sought to avoid arbitration in a case over an allegedly “predatory loan” contract that contained a delegation clause, but “was unable to do so when she failed to mention, let alone challenge, her contract’s delegation clause.” In March, the Sixth Circuit sided with the defendant, holding that “because Swiger’s arbitration agreement includes an unchallenged provision delegating [the] question [of whether the parties must arbitrate their dispute over the loan] to an arbitrator, the district court exceeded its authority when it undertook that task and found the agreement unenforceable.”
“If one wants a court to determine whether an arbitration agreement is enforceable, they must check if there is a delegation clause, and, if so, specifically challenge it,” Phillips states. “Otherwise, they will be left arbitrating whether they should be arbitrating.”
Esquer v. StockX
While the consolidated case will now move to arbitration, one of the cases filed against StockX in connection with the breach was previously determined to not be subject to dismissal on the basis of arbitration. In an order dated June 15, Eastern District of Michigan Judge Victoria Roberts determined that “because application of Michigan law would be contrary to fundamental California policy and California has a materially greater interest in Esquer’s claims than Michigan, StockX’s choice of law clause is unenforceable, [and] the Court will not compel arbitration of Esquer’s claims against StockX.”
In the complaint that she first filed before the U.S. District Court for the Northern District of California in September 2019, Esquer accused StockX of running afoul of California’s Consumer Records Act and Unfair Competition Law by “fail[ing] to secure and safeguard its customers’ private information, including the names, shipping addresses, email addresses, and passwords of those who created accounts on the StockX website.” Esquer argued that StockX “knew, or should have known, that its data security measures were inadequate,” particularly since the data breach “followed prominent breaches involving other e-commerce websites such as shein.com, panerabread.com, adidas.com, orbitz.com, macys.com, bloomingsdales.com, and zappos.com.”
StockX, which revealed that it surpassed 6.5 million lifetime buyers and 1 million lifetime sellers in the first half of 2021, has been building out its initially sneaker-focused offerings since its founding in 2016 and expanding internationally. In the wake of its latest funding round, a Series E-1 round that closed in April 2021, the company boasts a valuation of $3.8 billion.
Off-White appeared to be preparing for a push further into the market by way of a range of new products. A handful of trademark applications for registration – filed on an intent to use basis – suggest that the late Virgil Abloh’s brand is looking to venture into cosmetics (from toners and serums to nail polish), homewares, which will follow from its 2019 collaboration with IKEA, and stationary, among other things. If a slew of trademark applications is any indication, those products are slated to be branded with the company’s various marks, which range from its Off-White word mark and well-known arrows motif to the more recently-revealed face graphic and the not-yet-in-use Paperwork word mark.
In addition to using “the power of art to inspire” – and include – “future generations,” as well as groups that have been traditionally underrepresented in fashion, as the New York Times put it this weekend, Mr. Abloh – who died on Sunday at age 41 from a rare form of cancer – was famous for dealing in “irony, reference, and the self-aware wink to re-contextualize the familiar and give it an aura of cultural currency.” At least part of that exercise was grounded in how he approached the idea of branding. Since some of Abloh’s many noteworthy offerings come in the form of his almost-10-year-old company’s ubiquitous logos, a look at a few of Abloh’s most striking takes on source-identifying symbols seems an appropriate way to reflect on the work of the design visionary.
The Diagonal Lines
One of the most instantly recognizable elements of the Off-White brand is its signature diagonal stripes, which have adorned the sleeves of Off-White sweatshirts and the backs of t-shirts from the outset, and have since appeared on the exterior of “it” bags and peek out of the lapel of oversized fox fur coats. At the same time, it is, of course, the graphic that you find on cross-walks and on road signs – and have found there for many decades now, long before Off-White’s inception. As TFL first noted back in 2016, as a brand builder, Abloh did something very interesting when he adopted a series of black and white diagonal lines as his brand’s logo. Instead of utilizing an immediately brand-identifying mark, which is what most brands set out to do in order to give themselves a leg-up in the distinctiveness vein, Abloh chose one that was completely unoriginal.
In doing so, he enabled his brand to immediately benefit from an already-established icon.
Writer Cameron Wolf put it well back in 2016, stating that “even if the general population doesn’t recognize those diagonal stripes as Abloh’s,” his followers do – not only when they are used on garments and apparel but also potentially, when they are used to alert drivers on the road and pedestrians on the street. While Off-White exclusively maintains trademark rights in (and registrations for) the goods/services it uses the stripes motif on (think: apparel, accessories, footwear, furniture, retail store services, etc.), it has also enjoyed extra-legal benefits from being all over the map. “Imagine hundreds of thousands of Off-White fans seeing diagonal lines all the time and automatically thinking of Abloh’s label,” Wolf stated. “That’s extremely powerful because it can make the brand seem larger than it actually is.”
The upsides of the ubiquitous logo arguably have not worn wear off once the brand reached bona fide “hottest brand” status, as it did for many quarters in recent years, according to Lyst’s quarterly ranking of fashion’s hottest brands and products. In fact, the multi-lined pattern has likely served to reinforce the brand in the minds of in-the-know consumers.
Off-White Quotation Marks & Zip Ties
The various iterations of the diagonal stripe motif – including marks that contain 15 and 19 stripes – may be some of Off-White’s earliest and most famous trademarks, but they are not the only intriguing indicators of source that have come from the mind of Mr. Abloh. In fact, unlike many fashion/luxury brands, which tend to adopt a relatively small number of (more) straightforward marks and use them for decades (or longer), Off-White company has been known to make use of a number of different trademarks that serve as both culture commentary and source-identifying elements. Under Abloh’s watch, Off-White somewhat consistently inserted new logos (and plays on existing logos) into the mix as part of a larger – and consistent – evolution of the brand and potentially, as a way to avoid the potential onset of logo or brand fatigue, particularly given Abloh’s penchant for leaving his mark across a slew of branded and co-branded products across an array of industries. To put his collaborative efforts into perspective, his partners ranged from Nike and Rimowa to Evian and Mercedes-Benz.
Another mark that immediately comes to mind is the quotation marks, which flank an eye-watering variety of words in the Off-White ecosystem. Among them are, of course, “Product Bag” and “For Walking,” for which Off-White filed trademark applications for registration in 2019 and 2020 for use on “Tops as clothing; bottoms as clothing,” and footwear, respectively. In connection with those applications, which are still pending before the U.S. Patent and Trademark Office (“USPTO”) and have been subject to repeated pushback, including on descriptiveness grounds, counsel for Off-White has argued that the inclusion of the quotation marks changes “the very essence of the phrases [that appear in the quotations] by altering the way [they are] pronounced, what [they are] perceived to mean, and how [they are] understood by consumers.”
Specifically, the quotation marks “add a layer of meaning to the phrase,” the brand’s counsel has asserted in the past, claiming that “the overall effect of the quotation marks in [Off-White’s] trademarks is to transform the words used and create a unique, source-identifying commercial impression in the minds of consumers.” Ultimately, the marks are “elevated beyond being descriptive” – of shoes or product packaging – “due to the unique commercial impression created by [Off-White’s] distinct use of quotation marks,” which Off-White has claimed is different from “mere use of the word or phrase without the quotation marks.”
The USPTO has agreed, to some extent, issuing a notice of allowance for the “Product Bag” mark back in December 2020. The trademark office is now waiting for Off-White to file a statement of use to show that it is using the mark in commerce.
And not to be overlooked is the equally noteworthy red zip tie mark, which Off-White has used across footwear and other accessories since 2016, according to the application for registration that it filed for the mark – which consists of “a zip tie with a substantially rectangular end, all in the color red as used [in a specific position] on footwear” – in 2018. The zip tie is undoubtedly widely recognized by relevant consumers as being attached to products coming from Off-White, an association that has been helped along by years of use and widespread adoption off zip tie-affixed wares (namely, sneakers) by no shortage of mega-stars. Yet, the application has faced recurring pushback from the USPTO, an examining attorney for which has argued that, among other things, the zip tie does not function as a trademark because it is an unprotectable decorative feature of the Off-White’s products that drives consumers to purchase those products.
Counsel for Off-White has made an array of interesting arguments in favor of the mark’s registration, asserting that the red zip tie is such a significant indicator of source in the minds of consumers that “when consumers see [the red zip tie] affixed to [Off-White’s] goods, they immediately understand the product to have originated with [Off-White].” Need proof of that? It is demonstrated by 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.”
Beyond that, Off-White has taken issue with the USPTO examiner’s claim that the zip tie does not function as a trademark because it is an unprotectable decorative feature of the Off-White’s products that drives consumers to purchase those products. Disagreeing with the examiner’s assertion that “if consumers are purchasing a product because of the presence of [Off-White’s] mark [on that product], that makes it a decorative feature,” Off-White likens the zip tie to the logo-centric products of luxury goods brands, sales of which are driven, in large part, by the presence of the logos.
Trademarks for a New Demo
Finally, in what I think is a compelling and convincing argument, counsel for Off-White has argued that the zip tie is not really any different from “any other trademark that appears affixed to fashion products,” which often attract consumers to the product while also identifying the source of it. This is especially true for high-end fashion products “for which the communication to others that the product is produced by a certain source is much of the attraction of purchasing, owning, and wearing the product in the first place,” Off-White asserts.
In other words, consumers very well may buy a bag or belt or pair of shoes because of the trademark(s) that appear on those goods (and in fact, as I have argued at length in the past, they probably do buy them for that very reason). That does not, however, necessarily mean that the logos or brand names or patterns, etc. do not act as indicators of source of the goods; after all, a mark can be both decorative and source-indicating at the same time. In fact, counsel for Off-White has argued that when consumers are attracted to – and ultimately purchase – a product because of the trademark(s) that appear on it, this is almost certainly because of the “specific source-identifying properties of” those marks.
Ultimately, Off-White’s approach to trademarks falls neatly in line with what big brands have done for decades with their own marks, namely, word marks, logos, and monograms. Instead of selling luxury products, themselves, most established brands are more realistically trading on intellectual property rights, namely, trademarks and the significance of those marks to the consuming public (i.e., the goodwill that exists in those marks). 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), Abloh took the notion of what has traditionally acted as a source-indicator and flipped it on its head in order to cater successfully to a new generation of consumers.
Chances are, the USPTO (and other trademark offices) will eventually recognize that. And even if it does not, Abloh’s approach to branding is, nonetheless, a case study in what brands should aspire to, even if few are as creative or forward-thinking as Abloh was.
Off-White and S.C. Johnson appear to have put their branding differences aside for the time being, with the American multinational consumer packaged goods and chemicals company withdrawing its opposition to one of Off-White’s pending trademark applications for registration. On September 15, Racine, Wisconsin-headquartered S.C. Johnson filed a motion with the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board to withdraw its formal fight to block the registration of an Off-White trademark that consists of “a circle containing the term ‘OFF’ twice, where each term intersects the other at the letter ‘F’ as in the shape of a cross.”
The parties’ clash started not long after Off-White filed an application for registration for the circular mark for use on jewelry, handbags, and fragrances, among other things, in January 2019. (Off-White subsequently amended its application to remove Class 3, including fragrances.) In response, S.C. Johnson lodged an opposition, arguing in October 2019 that Off-White should be blocked from registering the “OFF Cross Design mark” because it is a bit too similar to the marks it already uses in connection with its 63-year old Off! insect repellant brand.
Due to its “longstanding and continuous use of its OFF! trademarks,” S.C. Johnson claimed that “the relevant consuming public recognizes the OFF! trademarks as identifying [S.C. Johnson] as the source of the goods offered under the OFF! trademarks” – not Off-White. This is particularly true, the company claimed, due to the fact that it “has expended considerable time, money, and effort advertising and promoting its OFF! trademarks throughout the U.S.,” which has resulted in “enormous recognition for and tremendous goodwill in the OFF! trademarks.”
While the two companies do not exactly trade in the same types of goods, S.C. Johnson’s OFF! brand sells various repellant products, whereas Off-White primarily sells garments and accessories, S.C. Johnson argued that consumers that see Off-White’s OFF Cross Design mark will, nonetheless, “believe that it is merely a stylization of S.C. Johnson’s OFF! trademarks.” This is due in part to the fact that “the dominant elements [of the two parties’ trademarks] and the emphasis of the marks are identical,” the company alleged. As a result, “The commercial impression conveyed by [Off-White’s] OFF Cross Design mark and S.C. Johnson’s OFF! trademarks is the same.”
More than that, S.C. Johnson claimed that its products and those of Off-White are not only “likely to be marketed and sold to the same consumers and move in the same channels of trade,” but … Off-White’s goods “are in the likely zone of expansion for goods sold by S.C. Johnson under the OFF! marks,” thereby, leading to further potential for confusion.
(As I noted in a previous article, here, S.C. Johnson was essentially seeking to broaden the protection that it currently enjoys from its rights in OFF! as used on the goods/services that it actually offers to ones that it argues are in the “natural scope” of potential expansion. This theory “contemplates that consumers understand a connection between various goods or services, and that a business that offers some items in connection with a brand is likely to be connected with the offering of similar goods or service under that brand,” says Gordon Feinblatt LLC’s Ned Himmelrich.
The doctrine, itself, is a interesting/relevant one particularly in light of the ever-expanding range of products/services offered up by consumer goods companies, fashion brands, included. Hermès’ new-ish cosmetics collection, Gucci’s home decor offerings, and Rosie Assoulin’s natural wine label are a few examples of this, as are the products that fall under the umbrella of Abloh’s almost-endless line up of collaborations – from tie-ups with Evian and Ikea to Mercedes and Moet. The core issue in such an argument is, of course, the extent of what additional goods/services fall within the natural zone of expansion.)
Still yet, because “a significant percentage of the relevant consuming public recognizes OFF! as an indicator of source, as shown by the volume of sales of the goods sold under the mark, [S.C. Johnson’s] use of the mark in commerce since the 1950s, and the advertising resources used to promote it,” those same consumers are likely to be confused as to whether there is a connection between products bearing its mark and those bearing Off-White’s Cross Design mark.
Faced with S.C. Johnson’s opposition, Off-White filed its response in March 2020, denying an array of the allegations made by the consumer goods conglomerate, and asserting a handful of defenses. Among other things, counsel for Off-White argued that its use of the Cross Design mark “is not likely to cause confusion” with S.C. Johnson’s marks, and that its goods are not “the same as or similar to [S.C. Johnson’s] goods/services and thus, are not likely to cause confusion with [S.C. Johnson’s] goods/services.”
Fast forward to September and S.C. Johnson said that it “moves to withdraw its opposition to the mark,” albeit without prejudice, meaning that it may take similar action again in the future. With the S.C. Johnson opposition out of the way, Off-White’s circular mark can now proceed to the rest of the registration process.
Off-White & The Bigger Picture
S.C. Johnson is not alone is seeking to stand in the way of others’ attempts to gain registrations for potentially confusing marks. In furtherance of its own aim to shut down trademark applications that it deems to be potentially harmful, Off-White has pushed back against an array of third-party marks, such as Off-Book, OFFPANDA, Off-Logic, Dark Whyte, Offstreet, and Offsky for use on various types of apparel and accessories, as well as others, such as OFF-BOUNDS for use in connection with entertainment services, “namely, displaying a series of films.” (If Off-White’s athleisure collection, OFF ACTIVE, and corresponding trademark application for the mark are any indication, it may opt to similarly brand its various category extensions in this same way, hence, the attempts to prevent others from using “Off” as a prefix of sorts.)
This comes in conjunction with Off-White’s enduring quest to amass trademark rights in/registrations for various word marks and graphics, as well as things like red zip ties. The brand has filed upwards of 80 trademark applications for registrations in the U.S., alone, over the past couple of years, and more with other international trademark offices.
Off-White appears to be notably more aggressive than many other similarly-situated companies when it comes to its trademarks (Supreme, for instance, waited over a decade to begin aggressively amassing registrations and policing many unauthorized uses). However, its practice of emphasizing the role/value of branding – and the emphasis placed on branding by other streetwear/skatewear brands – mirrors the model successfully utilized by luxury brands in that at the core of their model is the practice of leveraging intellectual property, namely, trademarks, and generating revenue thanks, in many cases, to striking markups that those trademarks enable them to enjoy. In other words, luxury brands and many streetwear brands, alike, are more primarily selling trademarks (i.e., brand names, logos, etc.) and the goodwill embodied in those marks than they are selling individual garments and/or accessories. And this is the result of the consumer recognition of those marks and the corresponding demand for them as indicators of source, of course, but also indicators of social status or belonging and/or as an indicator of the wearer being “in the know.”
And back on the opposition front, it is interesting (although, probably not surprising given the goods/services at play) that Bayer did not take action against Off-White as a result of its own circular logo, which very clearly served as the inspiration for Off-White’s mark. Chances are, if Off-White is on Bayer’s radar, counsel for the German multinational pharmaceutical and agricultural behemoth may have opted not to initiate an opposition after potentially determining that the two parties’ goods/services are simply too different to cause confusion among consumers. That does not mean that Bayer – whose brands range from Claritin, Windex and Ziplock to Roundup Ready 2 Xtend™ soybeans and TruFlex™ Canola (eww) – cannot take trademark infringement action against Off-White in the future, but I, for one, do not see that happening any time soon.
Late last week, as Off-White was landing on the receiving end of one trademark infringement lawsuit, which streetwear brand Walker Wear filed against it and retailers Saks and Farfetch, it was settling another. According to the docket in the trademark case that Off-White filed against ice cream chain Afters Ice Cream later last year, accusing the defendant of offering up merch and using “retail fixtures, signage, [and] interior décor” that is meant to “confuse consumers into believing that [its] products are Off-White products and/or that [it or its] business is affiliated with Off-White,” the parties have managed to settle their differences out of court, prompting counsel for Virgil Abloh’s brand to alert the court on August 20 that the matter has been settled.
In the complaint that it filed in a California federal court in November 2020, Off-White argued that Afters – a premium handcrafted ice cream chain founded by Scott Nghiem and Andy Nguyen, both of whom have “a background in clothing and/or streetwear” – was running afoul of trademark law by “manufacturing, advertising, marketing, promoting, distributing, displaying, offering for sale, and/or selling products” that make use of “one or more of Off-White marks,” and affixing “confusingly similar [or] identical” signage and interior decoration to its stores and pop-up outposts.” According to Off-White, such unauthorized uses of Off-White’s marks came in furtherance of the California-based chain’s attempt to confuse consumers into believing that it is connected in some way to Off-White when no such ties between the two companies.
Off-White pointed to “significant common law trademark” rights for its name and various logo marks, and five federal trademark registrations for its “15 alternating parallel diagonal lines of varying sizes” marks – which are mostly registered for use on garments and accessories, but one of the registrations includes use in connection with “retail store services featuring apparel, footwear, fashion and clothing accessories,” among other things – as the basis for its claims.
Afters swiftly shot back with some claims of its own, and among the laundry list of affirmative defenses that Afters cited in its January 2021 answer? Parody. As we previously noted, parody appears as though it could be a relevant argument since Afters did not merely copy-and-paste the Off-White name and striped branding for its t-shirts and sweatshirts on its own; it has included some additional elements. For instance, instead of using the full Off-White name on one of its t-shirt styles along with the diagonal stripe square, the Afters garments read, Off-Diet, a seeming play on the calorie count of ice cream. It has taken similar light-hearted jabs at other buzzy brands – from Anti Social Social Club (its version is “Anti Diet Diet Club”) to Kanye West’s Sunday Service, complete with “Ice Cream is King” and “Sundae Service” taglines. Since the case got its start, Afters released additional merch that plays on Off-White’s use of quotation marks.
The case has ultimately come to a close before any substantive findings with regards to either Off-White’s infringement claims or any of Afters’ defense. It would have been interesting to see Afters make the case that it should be shielded from trademark infringement liability due to the parodic nature of its offerings.
Other Parody Cases
The Off-White case – and Afters’ preliminary lodging of a parody defense – follows from a number of headline-making parody cases, which have, as King & Spalding partner Katie McCarthy put it, “illustrated the difficulties brands face when pursuing claims against trademark parodies in the U.S.”
One of the most recent of these cases came out of the U.S. Court of Appeals for the Ninth Circuit, which saw Jack Daniel’s wage trademark infringement and dilution claims against dog toy-maker VIP Products LLC for allegedly hijacking its trade dress and bottle design for a chew toy bearing the name “Bad Spaniels.” On the heels of the district court finding for Jack Daniel’s on all claims and entering a permanent injunction in its favor, the Ninth Circuit concluded in March 2020 that while VIP Products used Jack Daniel’s trademarks to sell its dog toys, the “humorous message” conveyed by the toy makes the use “expressive” and protected under a heightened First Amendment standard as a result.
In response Jack Daniel’s sought Supreme Court intervention, pointing to mixed treatment by lower courts of trademark infringement claims involving the use of famous marks on commercial products in a “humorous” capacity. In a September 2020 certiorari petition, which was ultimately tuned down by SCOTUS, Jack Daniel’s asked the nation’s highest court to determine “whether a commercial product using humor is subject to the same likelihood-of-confusion analysis applicable to other products under the Lanham Act, or [whether it] must receive heightened First Amendment protection from trademark-infringement claims, where the brand owner must prove that the defendant’s use of the mark either is ‘not artistically relevant’ or ‘explicitly misleads consumers.’”
The Supreme Court’s refusal to grant certiorari in January 2021 left the lower court’s decision – which shielded the toy from trademark liability in accordance with the First Amendment – firmly intact.
That development came almost 15 years after the Fourth Circuit sided with unaffiliated dog toy maker Haute Diggity Dog in the trademark suit waged against it by Louis Vuitton, which centered on a number of Haute Diggity Dog toys that resembled Louis Vuitton products, called “Chewy Vuitton.” The court found in favor of Haute Diggity Dog on the basis that the dog toys were obvious parodies – which the court defined as “a simple form of entertainment conveyed by juxtaposing the irreverent representation of the trademark with the idealized image created by the mark’s owner,” which conveys “two simultaneous and contradictory messages: that it is the original, but also that it is not the original and is instead a parody” – and not likely to confuse customers.
And more recently, in a separate Louis Vuitton-initiated parody fight, the luxury goods brand sued My Other Bag, Inc. in a New York federal court in 2014 over a line of canvas tote bags that replicated a number of Louis Vuitton’s iconic designer handbags. The Second Circuit sided with My Other Bag, issuing a summary order in December 2016, in which it affirmed the district court’s decision – and its finding that the My Other Bag tote bags were shielded from Louis Vuitton’s trademark dilution claim by the parody defense, as well as from its trademark infringement claim due to a low likelihood of consumer confusion – in favor of My Other Bag.
Speaking specifically to parody, the Second Circuit determined that the cotton tote bags co-opted Louis Vuitton’s handbag designs and the trademark patterns that come with them (the Toile Monogram and Damier print, for instance), and did so in a way that was recognizable. At the same time, the defendant’s bags still presented a “conscious departure” from Louis Vuitton’s offerings so consumers would know the bags were not, in fact, Louis Vuitton bags, thereby, giving rise to a successful claim for parody.
The court noted the significance of the fact that My Other Bag was not using Louis Vuitton’s trademarks in order to indicate the source of its own bags, and instead, its own brand was the “undisputed designation of source” of the tote bags, as demonstrated by the large “My Other Bag . . .” writing on one side of the totes.
In seeking Supreme Court intervention, which never came, counsel for Louis Vuitton argued, among other things, that “permitting an entire business model premised on the exploitation of famous marks to sell knock-off products is flatly at odds with Congress’s intent to protect famous marks from dilution.”
Back in the Off-White v. Afters case, the terms of the parties’ settlement agreement are confidential, with the settlement notice filed by Off-White merely stating that “the parties have reached a settlement and have executed a settlement agreement, [and] pending the occurrence of certain conditions precedent, the parties expect to file a stipulation of dismissal no later than September 10, 2021.”
As for one potential condition that Afters might have to make good on? Stopping its sale of the allegedly infringing wares. It is worth noting that as of the time of publication, Afters still displays photos of its merch lookbook on its site, which include the allegedly infringing wares, but the “swag” section of its site lists all of the products as sold out.
The case is Off-White LLC v. Afters Ice Cream, Inc., 8:20-cv-02121 (C.D.Cal.).