Paige is shifting gears in a burgeoning legal fight with Off-White over a trademarked stripe design.
About a week after a New York federal judge set the dispute on track for trial later this year, Paige LLC asked the court to dismiss Off-White’s April complaint looking for a declaration that its now signature horizontal stripe motif does not infringe on a trademarked striped stitching Paige uses on certain seams of its denim designs.
Paige told the court that it has never alleged “or even suggested” that Off-White’s stripe marks infringed the denim company’s rights, leaving no “justiciable case or controversy” for the court to decide.
“In fact, as Paige has repeatedly informed the plaintiff…it does not object to and will not sue the plaintiff based on any of the uses of the plaintiff’s marks of which Paige is presently aware,” the company said. “Further, while it has proposed settlement to avoid the potential for future disputes, Paige has never made any settlement demand that would interfere with or disrupt the current uses of the plaintiff’s marks. Put simply, there is no dispute. There is no legal ‘battle.’ There is no case or controversy. And there is no federal court jurisdiction.”
When Off-White, the growing luxury streetwear brand designed by longtime Kanye West insider and collaborator Virgil Abloh, launched the dispute, it said Paige had sent a cease-and-desist letter, alleging Off-White’s striped design is “so similar” to four trademarks owned by Paige that there was risk of “customer confusion” over the origin of and relationship between the brands.
Paige also allegedly asked Off-White to withdraw a pending trademark application for its stripe logo that, if granted, would protect its use on a full range of leather goods and apparel, and has filed a petition to have the pending application canceled.
Off-White also claimed to have tried negotiating with Paige out of court over the issue but said a deal was impossible given the denim company’s “overreaching requirements as to future restrictions” of Off-White’s striped mark.
In its move for dismissal, Paige admitted it’s made three attempts to settle the future possibility of disputes should Off-White “use its marks in a way that would be objectionable to Paige” by limiting the brand’s use of the marks. Paige said the primary element of these settlement offers is baring Off-White from using its stripe motif in a “small size.”
“These proposals have not been, as plaintiff alleges in its complaint, ‘overreaching,’” Paige argued. “In fact…none of the proposals would interfere with or disrupt the plaintiff’s present uses of the marks. Nonetheless, the plaintiff has either rejected Paige’s proposals outright or offered to refrain only from using the mark on the back pocket of jeans or other bottoms. From Paige’s perspective, however, this proposal is not sufficient.”
While this issue appears to be at the crux of Off-White’s complaint, Paige still pushed for a dismissal of the suit outright, saying it would “rather live with the hypothetical possibility that the plaintiff’s future conduct will give rise to a dispute than enter into an agreement that does not adequately protect its interests.”
The denim brand also swore not to sue Off-White based on any use of the stripe design “of which it is presently aware.”
A representative of Off-White could not be immediately reached for comment.
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