New York District Judge Jed S. Rakoff last week dismissed Off-White’s demand for a court declaration that it is not infringing on any of Paige’s trademarked stripe stitching designs, noting it was based on a “hypothetical scenario” and as such, presented no real controversy in need of court intervention.
Judge Rakoff pointed to the fact that Paige has sworn not to sue Off-White for any of its current use of diagonal stripes, which appear on clothing labels, hangtags and in several apparel and accessories designs. And as Off-White has no plans to use the stripes in any substantially new form, the prospect of a lawsuit is far from certain.
“Under these circumstances, it would not be appropriate to issue a declaration regarding whether or not any use of the Off-White diagonal marks infringes Paige’s trademarks,” Judge Rakoff said in a written decision. “Moreover, without any particular disputed use of the Off-White diagonal marks in question before the court, it would be difficult for the court to fashion meaningful declaratory relief that did not amount to an advisory opinion regarding a hypothetical scenario.”
Judge Rakoff, however, dismissed Off-White’s action “without prejudice,” leaving Off-White free to file another trademark suit against Paige should another issue arise in the future.
Representatives of Off-white and Paige could not be immediately be reached for comment.
The brands have engaged in some extensive back-and-forth since Off-White in April filed the action, with Paige offering a promise not to sue as reason enough that the case should be nixed.
Off-White, which is headed by longtime Kanye West insider and collaborator Virgil Abloh, pushed back saying such a “just kidding” approach after Paige sent infringement notices and demanded that Off-White pull any current applications for further trademark protection of its stripe design.
Although Paige told the court in its dismissal motion that it has not specifically threatened to sue over its marks, the brand admitted that earlier settlement talks sought to limit Off-White’s future use of the stripe design, namely in a small size.
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