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Fashion Label Sued by Company With the Same Name Claiming Trademark Infringement

When it comes to your business’s assets and unique qualities, it’s important your brand identity is protected. Trademark infringement cases in particular are popping up more often in today’s digital age, and it seems as if no brand is immune. Popular fashion label, Off-White™ recently came under scrutiny as a creative design agency with the same name alleged the brand infringed upon the business’s trademarks.

In OffWhite Productions LLC v. Off—White LLC, Case No. 1:19-cv-06267, OffWhite Productions LLC, a New York-based marketing and creative agency has alleged Virgil Abloh’s fashion brand, Off-White™, infringed upon its trademark. OffWhite Productions claims it has done business with the name OffWhite since the late 1990’s, approximately 15 years prior to when the Milan-based fashion brand got its start.

The agency, founded by Joshua White and amassing many popular name brand clients such as Nike’s Jordan Brand, IBM, and Coca-Cola over the years, stated it has been, “operating a website at offwhitedesign.com since July of 2001” while also “maintaining an active Twitter account with the handle @offwhitedesign,” though the account hasn’t posted any of its own content since 2015.

The lawsuit states OffWhite Productions did attempt to reach Off-White™ directly to ask the streetwear brand to “cease such infringing conduct,” claiming Off-White™ “refused to alter its conduct whatsoever in response to these communications” and continued to file for new trademarks, one of which is a logo OffWhite Productions claims is unmistakably similar to one of its own logos.

The agency argues such behavior appears to be an attempt by Off-White™ to “steamroll its way over and past its superior and senior rights in the OFFWHITE trademark,” and is “threatening to erect a commercial, branding and legal roadblock to the expansion of OffWhite Productions’ business, including with respect to areas of logical and foreseeable expansion beyond the goods and services in which it is currently engaged.”

Off White Productions alleges claims of federal trademark infringement, unfair competition, and common law trademark dilution, and is seeking monetary damages as well as injunctive relief to stop Off-White™ from representing themselves as such.

There has been no statement from Abloh or his team on the allegations made by OffWhite Productions; however, this case could prove to be an up-hill battle for Off-White™. In order to prevail on a trademark infringement claim, the trademarks themselves as well as the products and services must be similar. Though it could be argued marketing services are related to the fashion industry, it is a bit of a stretch. We will be interested to see how this battle by well-known parties over valuable intellectual property rights unfolds.

Houston Trademark Infringement Attorneys

When you work hard to build your brand, others might try to take advantage of it for their own profit. The experienced Houston trademark attorneys at Adair Myers Graves Stevenson have extensive experience both filing trademarks and enforcing existing trademarks for businesses of all sizes. If your business is interested in registering a trademark or you are concerned your trademarks are being infringed upon, contact us today for more information on how we can help.