Ahead of an influx of headlines following Usher’s Super Bowl half-time show, which included a custom and heavily-crystalized look courtesy of Off-White, the LVMH-owned brand initiated an interesting trademark proceeding. In a petition for cancellation filed with the U.S. Patent and Trademark Office (“USPTO”)’s Trademark Trial and Appeal Board (“TTAB”) in late January, counsel for Off-White is urging the trademark body to overturn a registration for SOFT WHITE, arguing that “it is or will be damaged by the registration of the trademark,” which was issued to Mississippi-based Sick Teez Supplier LLC early this year.
Setting the stage in its January 29 cancellation petition, counsel for Off-White asserts that the Off-White brand is “an internationally renowned streetwear and luxury fashion label founded by the late American creative designer Virgil Abloh” and that it has amassed rights in trademarks that “have become famous and are distinctive indicators of the origin of [its] goods and [that] are extremely valuable symbols of [its] goodwill.” Those marks (obviously) include an array of Off-White centric marks, including the OFF-WHITE and OFF-WHITE C/O VIRGIL ABLOH word marks, as well as various stylized versions of the OFF-WHITE mark for use across a range of classes of goods/services, including but not limited to garments, accessories, footwear, homewares, fabrics and textiles (none of which are “primarily in the color off-white,” according to the description of the goods/services in more than one registration), etc.
As is the case with trademarks, Off-White’s trademark rights extend beyond uses of the OFF-WHITE mark, itself, to confusingly similar marks, which is why Off-White is looking to stomp out Sick Teez Supplier’s registration for SOFT WHITE for use on things like hats, hoodies, jeans, t-shirts, jackets, and other clothing items (in Class 25). Part of the basis for Off-White’s pushback: It claims that Sick Teez Supplier’s SOFT WHITE mark is “so similar to [its own] marks in sound, appearance, meaning, and/or commercial impression as to be likely to cause confusion, mistake or deception as to the source of origin or sponsorship of the goods for which the marks are used or are intended to be used on or in connection with.”
In short: Because Sick Teez Supplier’s mark and the goods it is using the mark on are so similar to Off-White’s, consumers are likely to believe that Sick Teez Supplier and/or its wares are affiliated with or otherwise endorsed by Off-White when no such connection exists.
Moreover, Off-White argues that such similarity and product overlap is not a coincidence, as Sick Teez Supplier is “intentionally attempting to trade off of [Off-White] and [its] extremely valuable goodwill” by way of the SOFT WHITE mark, and is likely to cause “irreparable loss, injury and damage to” Off-White – which has continued on in the wake of Abloh’s death in 2021 – in the process.
Not limited to trademark infringement arguments, Off-White asserts in its petition for cancellation that prior to Sick Teez Supplier filing its application for registration for the SOFT WHITE mark in May 2022 (and nabbing a registration in January 2024), the OFF-WHITE trademark had “acquired distinctiveness and a high degree of consumer recognition and, as a result of [its] long and extensive use of the same, had become famous.” Against that background. Off-White maintains that Sick Teez Supplier’s “registration or commercial use of [the SOFT WHITE] mark “will cause, or is likely to cause, dilution of the distinctive quality of [the OFF-WHITE] marks and would thereby diminish the capacity of [those] marks to identify and distinguish [Off-White’s] goods.”
The cancellation is worthy of attention (in my opinion), as it raises some questions both with regards to the reach of Off-White’s rights and in terms of dilution, namely, the level of fame necessary for making such a claim in the first place.
With regards to Off-White’s rights in its name, the brand has taken a stand against a number of unaffiliated uses of OFF on similar goods/services, waging oppositions against others looking to register marks like OFF-BOOK, OFF-LOGIC, OFFPANDA, OFFSKY, and OFFSAD for use in Class 25. Each of those resulted in defaults and subsequent abandonments on the part of the trademark-filing party. At the same time, Off-White has also pushed back against certain uses of the word WHITE in Class 25. It has opposed since-abandoned applications for registration for DARK WHYTE and INSPIER WHITE, for example.
These actions all appear to be part of a larger effort by Off-White’s counsel to “shrewdly focus their attention on businesses that are seeking the benefits – and legal presumptions – of federal trademark registration,” trademark attorney and former USPTO examiner Ed Timberlake told TFL. “The circumstances seem to suggest Off-White frequently hopes (and is frequently right) that the other side will simply default [in response to any opposition/cancellation proceedings], and Off-White will not have to worry about too many OFF or WHITE marks being registered in the clothing space.”
More broadly, counsel for Off-White is likely aiming to send a message to future filers of applications for registration for marks that make use the terms OFF or WHITE in similar classes of goods/services. The brand may be “hoping that people will search the [U.S. trademark] records, see the activity, and counsel potential future filers away from this namespace,” Timberlake says.
As for dilution, Off-White is in for more of an up-hill battle. The brand may be among the most well-known in the streetwear and luxury fashion space; with its counsel pointing to Off-White being characterized as “the most popular brand in the world by Vogue,” as well as its pattern of collaborating with “some of the largest brands in the world, including NIKE and IKEA,” which have “garnered extensive media attention,” as indicators of its famed status. Not finished, counsel for Off-White asserts that the brand’s “marketing, advertising and distribution efforts, as well as the word-of mouth buzz generated by its consumers, have made [it] famous worldwide.”
Even with the foregoing in mind, Off-White’s well-known status among fashion fans/consumers very well may not be enough for it to meet the high bar for a successful dilution by blurring claim. Sick Teez Supplier will almost certainly make arguments to chip away at Off-White’s attempt to establish the requisite level of fame, assuming it opts to take on the brand by way of a response.
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