Off-White Resort 2020

Off-White LLC was hit with a trademark infringement lawsuit by advertising and creative agency OffWhite Co., which claims it used the name well before designer Virgil Abloh’s upstart label. 

The names’ similarity and the Off-White fashion brand’s meteoric fame has made it so the agency can’t even rely on the #OffWhite hashtag to advertise its own work on social media, according to OffWhite Co.’s suit filed Sunday in New York federal court. OffWhite Co. said it has used its name since the late Nineties, and registered the “OffWhite” trademark with the U.S. Patent and Trademark Office in 2014. 

“Since the onset of defendant’s program of mass infringement of the ‘OffWhite’ trademark, however, the #OffWhite hashtag has been ‘tweeted’ and posted on other social media platforms many thousands of times — but in relation to defendant’s business, not plaintiff’s,” OffWhite Co. said in the suit. 

A representative for Off-White couldn’t immediately be reached for comment Tuesday. 

OffWhite Co.’s suit doesn’t indicate how much in damages it is seeking against Off-White. The Lanham Act, which governs trademark rights, allows parties to ask for monetary damages including the disgorgement of profits from the alleged infringement. But plaintiffs, of course, face the burden of showing infringement.  

The suit raises some increasingly common trademark issues arising from social media marketing, though it doesn’t quite involve direct fashion industry competitors. Abloh’s label sells high-end fashion at luxury prices — sweatshirts retailing on the brand’s web site hover near the $1,000 range — while OffWhite Co. advises brands across industries on marketing, creative and packaging design.

OffWhite Co. does argue that Abloh’s Off-White has applied to trademark “Off-White” for retail and online store services in one of the same trademark classes in which OffWhite Co. holds its “OffWhite” trademark.  

But when companies offer generally distinguishable goods and services, are generally found in different trade channels, and directed toward different customers, it can be a tougher case to make, observers said.  

“If these parties operated in the same space, sold to the same consumers, and had a more compelling relatedness, this would be a very different case,” said Christopher Kelly, chair of the trademark practice at Wiley Rein LLP. 

At the same time, it raises issues about promotion on social media platforms where audiences may be broad, and the same name could arguably mean different things to different viewers. Or at least, not be immediately clear about what brand it refers to. 

Hashtags are frequently trademarked now, but for a while since the early days of online marketing, advertisers had viewed them more as a functional aspect of the Internet, said Kelly.  

“This is a case where Off-White LLC has gotten very famous, very fast, that it has more recognition on social media than does [OffWhite Co.],” said Kelly. 

While trademark law makes room for similar or even identical trademarks to be used in different products or services, brands can sometimes block companies operating in other industries from using their name or a similar one. 

But that is a route pursued more by universally famous brands, who may argue that their name being used by other companies in different contexts would dilute their trademark, attorneys said. 

“Coca-Cola could say, ‘no one can make Coca-Cola blue jeans,’” said David Perry, who co-chairs Blank Rome LLP’s intellectual property and technology practice group, using a hypothetical example. “They can argue their mark is entitled to that protection.”