In July 2018, Off-White filed an application for an unconventional trademark. Virgil Abloh’s “it” streetwear brand was claiming rights in a small red, unmarked zip tie for use on “handbags, wallets, [and] backpacks,” and “tops, bottoms, headwear, [and] footwear.” In other words, Off-White claims that it maintains some exclusive rights in the red zip tie that adorns its footwear and accessories, and wants the U.S. Patent and Trademark Office (“USPTO”) to award it a nationally-binding, federal trademark registration as a result.
Almost from the outset, the USPTO has not made Off-White’s quest for registration easy. In December, Linda M. Estrada, an examining attorney for the U.S. trademark body, determined that Off-White’s trademark was preliminary ineligible for registration. Her reasoning? The proposed mark – i.e., the configuration of the zip tie – is functional, and thus, barred from registration since “functional matter cannot be protected as a trademark.” More than that, she found that 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 capable of identifying the source of a product, which is the primary function of trademarks, after all.
Finally, Estrada decided that Off-White’s trademark, namely, its claim of rights over the color red in connection with the zip tie, “confusingly similar” to at least two already-registered trademarks, both of which exist for the word “red.”
With the foregoing in mind, in December 2018, Estrada sent Off-White an Office Action – a letter commonly sent by the USPTO to notify a registration-seeking party about issues with his application, including the reason why registration is being refused or what requirements must be satisfied in order for registration to be appropriate.
In order for the zip tie to be eligible for a registration, Estrada stated in the Office Action, Off-White would need to provide information addressing its use of the color red in connection with the zip tie and showing that the zip tie is not being used in a purely function manner. Counsel for eh brand would also need to establish that the red zip tie has acquired distinctiveness in the mind of the ordinary consumer. In plain English: Off-White would need to present evidence suggesting (or actually showing) that the average consumer links the the red tie to a single source. And that is precisely what counsel for the brand tried to do this summer.
In a response dated in June, counsel for Off-White argued that the 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.” Off-White’s counsel pushed back against Estrada’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.”
With the ball back in the USPTO’s court, since the Office Action-Response back-and-forth can go on for as many as three rounds, the examining attorney – now Verna Ririe – pushed back against Off-White’s response, refusing to register the mark yet.
In a second non-final Office Action, Ririe echoes some of Estrada’s determinations, stating that the zip tie is not registerable as it “appears to be a functional design,” and points to examples of red zip ties available for sale on sites, such as Amazon, as evidence of the fact that “neither the design nor the color of [Off-White’s] ties is distinctive … [or] used for [source] identification purposes,” the latter point being critical, as source identification is the core purpose of trademark law and the protections it affords.
Aside from the functionality issue, Ririe asserts that registration would also be improper here because Off-White has not yet provided evidence that consumers have come to identify the red zip tie with a single brand, as required in order for product designs to be registered. This can be achieved by providing evidence of “advertising expenditures, sales success, length and exclusivity of use, unsolicited media coverage, and consumer studies (linking the trademark to the source).
Still yet, Ririe takes issue with Off-White’s attempt to claim rights in the color red in connection with the zip tie mark. “Though the current mark appears to be a configuration mark and not merely a color mark,” she states, “the description of the mark is vague,” and thus, “the color mark refusal is accordingly maintained pending a clarification of the nature of the mark.
Off-White now has six months to respond to the examiner’s concerns. After Off-White’s counsel provides a response, the USPTO may issue a third and final Office Action barring the registration of the mark or it may permit the application to move forward in the application process.
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