Off-White Sues An Ice Cream Shop in California: The Benefits of Federal Trademark Registration
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| The Off-White design mark (federally registered) |
Virgil Abloh is undoubtedly one of the most sought-after designers in the world right now. Off-White, which Virgil founded in 2013, is credited with ushering in a new era of luxury streetwear. As brands expand, managing intellectual property assets become an important component of running a successful business. Off-White is not an exception. Two days ago, Off-White filed a complaint in the United States District Court for the Central District of California, detailedly documenting that a Californian ice cream shop infringed its trademark by selling merchandise and featuring store décor incorporating Off-White's federally registered mark in violation of § 32 of the Lanham Act. See 15 U.S.C. § 1114. The law makes it unlawful to "use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark (emphasis mine) in connection with the sale, offering for sale, distribution, or advertising of any goods or services". I always find it a good practice to read the complaint in its entirety to grasp the gist of the case. So here's the summary of the complaint in my own words.
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| The décor in question (Taken from the complaint) |
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| One of the infringing products (Taken from the complaint) |
Off-White owns a federally registered trademark in its widely recognized design mark "comprised of alternating parallel diagonal lines" (pictured above). The brand has been using the mark in commerce in connection with its various apparel and accessory lines. The complaint highlights that the mark is "prominently placed in the minds of the public". Off-White claims that Afters Ice Cream is unfairly and deceptively trading on "[the mark's] incalculable goodwill" by selling merchandise bearing the mark. Plus, its store décor is highly evocative of what is "exclusively associated with" the brand among a large segment of consumers, thereby committing an actionable false designation of origin that the Lanham Act strictly prohibits. Upon discovering the infringing use, Off-White cordially sent a cease-and-desist letter back in June to dissuade the ice cream shop from further using the mark without consent, but the complaint emphatically points out that the bad behaviors continued despite Off-White's initial conciliatory gesture. In sum, the complaint concludes that Afters Ice Cream's wrongful behaviors are "knowing, deliberate, willful" and meant to confuse and deceive consumers" in blatant disregard of Off-White's rights". As remedies, Off-White seeks disgorgement of After Ice Cream's ill-gotten profits, plus other damages as the court sees fit. It also requests a preliminary and permeant injunction to stop Afters Ice Cream from further engaging in infringing behaviors.
So how would this case play out in the courtroom if the two do not ultimately settle the issue? As of now, just based on the complaint (since an answer has yet to be filed), Off-White seems to advance convincing legal arguments. Trademarks that are federally registered with the United States Patent and Trademark Office (USPTO) enjoy a high level of protection in commerce. That's precisely why businesses care about registering their marks in the first place. One small point! The complaint demands jury trial. Why? Off-White appears to believe that the jury will be sympathetic to its case because people do not like thieves. In essence, Off-White is deprived of a property asset (isn't it intellectual property after all?). However, other things might come into play in the minds of the jury as well. Off-White is now a global corporation with huge resources, and Afters Ice Cream is a relatively small-sized ice cream chain specializing in handcrafted ice cream products in California. There could be a home advantage for Afters Ice Cream in that sense. I'm not sure about how the court would decide on the décor issue, but it would be quite challenging for Afters Ice Cream to get away with the selling and promoting of the disputed merchandise, especially when it prominently displays "Off-Diet". For now, let's wait and see what Afters Ice Cream would answer in response to the complaint.
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