UPDATE (November 1, 2019): Virgil Abloh‘s streetwear company Off-White™ is still in the trenches of a court battle with similarly named business-to-business consulting company OffWhite Productions. According to The Fashion Law, the latest update comes in the form of an amended complaint submitted by OffWhite Productions.
In its most recent complaint, OffWhite Productions makes most of the same claims as it did previously, however the company also mentions that it actually sells branded consumer goods under its name – a fact it neglected to state the first time around. Because it sells products under the name OffWhite, the company argues that Off-White™’s selling of “an increasingly broader range of goods,” while “filing of a raft of U.S. federal trademark applications for its brand” related to those goods, “has become intolerable.”
OffWhite Productions also added a federal unfair competition claim in place of its previous common law trademark dilution claim. According to The Fashion Law, trademark dilution takes place when “one party uses another’s famous mark in a way that blurs or tarnishes the mark.” The dilution claim was likely removed after Off-White™ pointed out 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.”
The streetwear brand also noted that OffWhite Productions has yet to disclose when it actually began selling its alleged consumer goods, stating that the company’s website “bears no mention of any goods it manufactures, and no suggestion that [it] actually sells any goods whatsoever, or that it plans to do so.” There is a chance the company started selling physical products in hopes of upping its chances of winning this lawsuit.
Stay tuned for more information surrounding this lawsuit as it arises.
ORIGINAL STORY (July 10, 2019): Virgil Abloh‘s label Off-White™ is being sued by a New York-based marketing and creative agency called OffWhite. The case — which was first reported by The Fashion Law – sees OffWhite Productions LLC claim that the brand’s name is overly similar to its own federally registered trademark covering “marketing, product design and related services.”
Overall, OffWhite Productions has filed claims including federal trademark infringement, unfair competition and common law trademark dilution. The company is hoping to be awarded monetary damages, and to bar Off-White™ from continuing its alleged infringement.
The design and creative agency also claims that it has been doing business under this name since the late 1990s, as well as operating a website since July, 2001. As reported in The Fashion Law, the claim goes on to accuse Off-White™ of “threatening to erect a commercial, branding and legal roadblock to the expansion of [OffWhite Productions'] business, including respect to areas of logical and forseeable expansion.”
Additionally, OffWhite goes on to accuse the Milan-based label of “dooming” its “ability to make use of, develop and enjoy the benefits of the brand.” Related to this, the case specifically focuses on SEO practices, public relations and “celebrity outreach campaigns,” all of which have knocked OffWhite Productions’ website from the top page of Google results when searching for OffWhite or Off-White.
Discussing the suit, The Fashion Law highlighted two key areas in which Abloh’s brand was likely to succeed. Firstly, it highlighted that OffWhite’s marketing services are unlikely to be confused with Off-White™’s products. The other major issue relates to trademark dilution, The Fashion Law states that Off-White™ the brand has almost definitely passed the threshold of being known by consumers, OffWhite is less likely to reach this level.
For more information on the case, head over to The Fashion Law website.
In related news, Virgil Abloh Instagram was hacked.
I, for one, am not so sure about the strength of this case … https://t.co/rQPsnkKk93
— Julie Zerbo (@ZerboJulie) July 10, 2019