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Fashion Label Off-White Wants Trademark Case Thrown Out

In a previous blog, we discussed a recent trademark infringement case involving an accusation by marketing and creative agency OffWhite Productions LLC against popular fashion label Off-White. According to recent developments, Off-White wants the suit thrown out altogether.

Over the summer, OffWhite Productions LLC filed a trademark infringement claim against fashion label Off-White for federal trademark infringement, unfair competition, and common law trademark dilution, and planned to seek monetary damages and injunctive relief for having a similarly named business. Off-White founder Virgil Abloh is fighting to get the case dismissed.

In response to the suit, Abloh stated his fashion brand had fallen victim to, “a behind-the-scenes marketing consultant to Fortune 500 companies” who is attempting to “profit through litigation from [Off-White’s] meteoric fashion success.” According to the motion to dismiss and the corresponding memo, counsel for Off-White requested United States District Judge Paul Engelmayer, of The United States District Court for the Southern District of New York to toss out the case filed by OffWhite Productions in its entirety. Abloh asserted the like-named marketing company ultimately failed to make its case.

Counsel for Off-White stated, “no one is likely to confuse [Off-White’s] jackets, sweatshirts, and other streetwear apparel, or its retail stores with [OffWhite Productions’] business-to-business marketing consulting services.” The popular clothing brand went on to explain that at its core, true trademark infringement requires not only the use of a similar trademark but the likelihood consumers will be confused about the source of the parties’ products as a result.

Additionally, OffWhite Productions made claims of trademark dilution. Trademark dilution applies when a famous trademark is used in a way that stands to diminish that trademark’s ability to identify a single source of the products. The marketing agency claims it has been using its OffWhite trademark since the 1990’s, and that by adopting the same trademark 20 years later, Off-White “diluted the distinctive quality of [its] OffWhite trademark.” According to Off-White’s counsel, however, because OffWhite Productions is not as recognizable or famous as Off-White, this claim does not apply.

Off-White’s counsel claims “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,” Off-White’s “retail sales could not possibly dilute [OffWhite Productions] trademark.”

Houston Trademark Infringement Attorneys

Ideas are some of the most powerful and valuable assets individuals and businesses can own, but you must enforce your ownership rights. Intellectual property assets are essential to the success of any modern business and should be protected accordingly. At Adair Myers Graves Stevenson, we help businesses, entrepreneurs, and innovators protect their intellectual property from infringement, misuse, and misappropriation. If your business’ intellectual property assets are being infringed upon, contact the experienced attorneys at Adair Myers Graves Stevenson today.