On Monday, the legal team for Virgil Abloh’s luxury brand, Off-White, filed a lawsuit in Los Angeles to protect some of its most iconic “trademarks”—in this case, the red zip-ties and quotation marks that have come to be associated with both Abloh and his brand.
The suit was filed against Rastaclat, a brand that produces shoelace bracelets, and its retail partners, including Zumiez, Finish Line and Amazon. Off-White’s legal team claims that Rastaclat and its partners knowingly sold infringing products to consumers which resulted in a “substantial monetary loss and irreparable injury.”
“By these dealings in infringing products, the defendants have violated Off-White’s exclusive rights in the Off-White Marks, and have used marks that are confusingly similar to, identical to and/or constitute infringement of the Off-White Marks in order to confuse consumers into believing that such infringing products are Off-White products and aid in the promotion and sales of their infringing products,” Off-White’s legal defense wrote in its opening brief.
To support their argument, Off-White’s lawyers wrote that the defendants acted in “unquestionably bad faith” by trading off of the goodwill generated by the Off-White branding, along with unambiguously referring to the brand in packaging and using the same red or orange tag.
Off-white said that its lawyers immediately sent cease-and-desist letters once the infringement was verified but that one or more of the defendants had still failed to comply. In fact, Off-White lawyers said, Zumiez had yet to even respond to the allegation.
However, the luxury brand may have some difficulty defending these trademarks in court—most notably because they are not technically trademarked. Instead, Off-White is arguing that these marks should be protected as a matter of “common law” copyright infringement due to its extensive efforts in supporting and protecting the branding.
However, according to The Fashion Law blog, the United States Patent and Trademark Office (USPTO) has previously received applications from Off-White to register its trademarks—and the office remains skeptical.
“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,” wrote the Fashion Law.
Regardless, the common law statutes that Off-White is invoking cover “any word, name, symbol, design, color, or any combination thereof, used in commerce to identify and distinguish the goods of one manufacturer or seller from those of another and to indicate the source of the goods,” according to the Fashion Law, and would therefore apply to this particular case.
Yet the brand’s troubles with the USPTO could still end up being its legal undoing for this particular matter. Off-White’s ability to win the case will rely on its ability to prove that both the quotation marks and zip-ties mentioned in this case are “source identifying” and not simply decorative in nature if it wants to protect the brand and establish a precedent.