Paige Denim last week told New York federal judge Jed Rakoff to nix Off-White’s move for a declaration that its now signature horizontal stripe motif does not infringe on Paige’s trademarked striped stitch design, claiming it’s never “even suggested” infringement, but Off-White is refusing to take things lightly.
The increasingly popular and expanding luxury streetwear brand, founded by Kanye West insider Virgil Abloh, said Paige’s argument and its purported promise not to sue over any current versions of Off-White’s stripe motif is little more than an attempt to “scale back its accusations of infringement” now that it’s facing legal action.
“[Paige’s motion] amounts to little more than a self-serving, litigation-induced disclaimer that would subject Off-White to liability for past, current and/or planned uses of its Off-White diagonal mark(s), and reserves the right for Paige to sue Off-White at its discretion, depending on the iteration of the [mark],” Off-White said in its opposition.
The company went on to argue that Paige’s “conditional so-called ‘covenant’ does absolutely nothing to destroy the case or controversy that is unquestionably present in the instant action,” and cited related New York rulings saying “defendants cannot pretend now that their notices to plaintiff were ‘just kidding.’”
Although Paige told the court in its dismissal motion that it has not threatened to sue over its marks, leaving no legitimate controversy for the court to decide, it admitted that settlement talks sought to limit Off-White’s future use of the stripe design, namely in a small design.
To Off-White, this, along with Paige’s demand that a trademark application for a stripe design be withdrawn, is reason enough to have the court decide on the use of the marks.
“Off-White has used, and intends to continue to use, the Off-White diagonal marks in a variety of different sizes, orientations and locations on, in or in connection with Off-White products, particularly since such Off-White diagonal marks are construed as unique to Off-White,” the brand said.
With that, the brand asked the court to dismiss Paige’s dismissal motion and allow the case to proceed.
Counsel for Paige could not be reached for comment.
Earlier this month, Judge Rakoff set the case on a path for trial that could begin late this year if no resolution between the parties is reached before the first week in November.
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