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30 April 2019Trademarks

Off-White claims quotation marks as common law trademark rights

US-based fashion label  Off-White has filed a trademark infringement complaint, which claims it has common law trademark rights for using quotation marks around words.

In its complaint, filed yesterday April 29 at the  US District Court for the Central District of California, Off-White said one of jewellery-maker  Rastaclat’s bracelets was infringing several Off-White trademarks.

Off-White said it has extensively used quotation marks around terms in commerce, and the public has come to recognise such quotation marks as being a source identifier for the brand.

One example of how this is used by Off-White on its products is on a black wallet, which has the term “wallet” written across it in bold white text.

Off-White alleged that the packaging of Rastaclat’s bracelet infringed these common law rights. As evidence, Off-White submitted the insert card from the bracelet’s packaging, which has “insert card” written on it.

Additionally, Rastaclat’s bracelet also features a red zip tie. In its complaint, Off-White said it has a number of pending trademark applications including the “Off-White Red Zip Tie” which it also uses on a number of its items.

But, according to  The Fashion Law, in December 2018 the US Trademark Office preliminary rejected Off-White’s application. It said it was “confusingly similar” to at least two existing marks. Moreover, it said the configuration of the zip tie is “functional” and cannot be protected as a trademark.

It said Rastaclat was referencing Off-White on the bracelet’s packaging and copying the format of the text on certain Off-White packaging.

In its complaint, Off-White said its counsel had sent cease and desist letters to retailers Zumiez and Finish Line, also named as defendants in the suit, asking them to stop sales of the bracelets.

To support its claims of potential consumer confusion, Off-White submitted evidence from eBay listings selling Rastaclat’s bracelets as “Rastaclat Off-Clat Off-White Virgil Abloh White Bracelet”, as well as a YouTube unboxing video with 28,386 views, entitled “Off white Rastaclat review off-clat bracelet”.

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