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Off-White is Clashing With S.C. Johnson Over Their Respective “OFF” Branding

Post Time:2020-10-15 Source:www.thefashionlaw.com Author: Views:
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Off-White is in the midst of its latest branding venture. As indicated by some relatively recently-unveiled signage (both online and on the façade of some of its brick-and-mortar outposts), the graphics that appear on various garments and accessories, and some interesting trademark applications, the Virgil Abloh-helmed brand is putting the “Off” element of its name front and center. Hence, the necklaces that consist of the letters “O F F” dangling from a chain, the t-shirts with the word printed right below the collar seam, and the little logo that serves as the brand’s Instagram icon.


In placing its emphasis on “Off,” the uber-famous fashion brand and its ubiquitous founder have not only engaged in their latest act of morphology; Off-White has, after all, mastered the art of evolving, especially when it comes to branding. They have set the foundation for a whole new slew of legal squabbles, just as they have in the past, such as when they opted to adopt the crosswalk-like graphic of diagonal lines as one of the brand’s earliest indicators of source, and to seek trademark registrations for it, thereby, resulting in trademark-centric fights with the likes of Helly Hansen, Los Angeles-based denim brand Paige, and Dubai-based health insurance administrator Neuron LLC, among others.


This time, the trademark may be different but it appears as though the rise of legal issues is the same, as Off-White has ruffled the feathers of an entity even bigger and mightier than itself: S. C. Johnson & Son.


Get Off

In the midst of filing more than 20 different trademark applications for various stylizations of the word “Off” in the U.S., alone, at least some of which have resulted in registrations (others are still in the pre-registration process and some have been abandoned by the brand), one application for registration, in particular, stood out to S. C. Johnson: the word “OFF” written both horizontally and vertically inside of a circle, for which Off-White is claiming rights in connection with its intent to use on various types of bags, including “all purpose carry bags,” and jewelry.


In the currently-pending opposition that it initiated with the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (“TTAB”) in October 2019, the consumer cleaning supply and chemical behemoth called foul. According to its notice of opposition, counsel for S. C. Johnson argued that Off-White should be blocked from registering the “OFF Cross Design mark” because it is a bit too similar to the marks it already uses in connection with its 63-year old Off! insect repellant brand. 


Due to its “longstanding and continuous use of its OFF! trademarks,” S. C. Johnson claims that “the relevant consuming public recognizes the OFF! trademarks as identifying [S.C. Johnson] as the source of the goods offered under the OFF! trademarks” – not Off-White. This is particularly true, the Racine, Wisconsin-headquartered company claims, due to the fact that it “has expended considerable time, money, and effort advertising and promoting its OFF! trademarks throughout the U.S.,” which has resulted in “enormous recognition for and tremendous goodwill in the OFF! trademarks.”


While the two companies do not exactly trade in the same types of goods, S.C. Johnson’s Off! brand sells various repellant products whereas Off-White primarily sells garments and accessories, S.C. Johnson claims that consumers that see Off-White’s OFF Cross Design mark will, nonetheless, “believe that it is merely a stylization of S. C. Johnson’s OFF! trademarks.” This is due in part tothe fact that “the dominant elements [of the two parties’ trademarks] and the emphasis of the marks are identical,” the company alleges. As a result, “The commercial impression conveyed by [Off-White’s] OFF Cross Design mark and S. C. Johnson’s OFF! trademarks is the same.”


More than that, S. C. Johnson claims that its products and those of Off-White are not only“likely to be marketed and sold to the same consumers and move in the same channels of trade,” but …  Off-White’s goods “are in the likely zone of expansion for goods sold by S. C. Johnson under the OFF! marks,” thereby, leading to further potential for confusion.

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(Here, S.C. Johnson is essentially seeking to broaden the protection that it currently enjoys from its rights in OFF! as used on the goods/services that it actually offers to ones that it argues are in the “natural scope” of potential expansion. This theory “contemplates that consumers understand a connection between various goods or services, and that a business that offers some items in connection with a brand is likely to be connected with the offering of similar goods or service under that brand,” says Gordon Feinblatt LLC’s Ned Himmelrich.


The doctrine, itself, is a interesting/relevant one particularly in light of the ever-expanding range of products/services offered up by consumer goods companies, fashion brands, included. Hermès’ new-ish cosmetics collection, Gucci’s home decor offerings, and Rosie Assoulin’s natural wine label are a few examples of this, as are the products that fall under the umbrella of Abloh’s almost-endless line up of collaborations – from tie-ups with Evian and Ikea to Mercedes and Moet. The core issue in such an argument is, of course, the extent of what additional goods/services fall within the natural zone of expansion.)


Still yet, because “a significant percentage of the relevant consuming public recognizes OFF! as an indicator of source, as shown by the volume of sales of the goods sold under the mark, [S.C. Johnson’s] use of the mark in commerce since the 1950s, and the advertising resources used to promote it,” those same consumers are likely to be confused as to whether there is a connection between products bearing its mark and those bearing Off-White’s Cross Design mark.


As such, S. C. Johnson claims that the registration of Off-White’s mark would “impair [its] exclusive right to use the OFF! marks in connection with the goods identified in [its] registrations” – namely repellant sprays and candles – and any others that are being “offered for sale by S. C. Johnson in the U.S.” Such a registration would also “diminish the tremendous goodwill accrued by S. C. Johnson in the OFF! marks,” the company argues.


Faced with S. C. Johnson’s opposition, Off-White filed its response in March, denying an array of the allegations made by the privately-held consumer goods conglomerate, and asserting a handful of defenses. Among other things, counsel for Off-White argues that its use of the Cross Design mark “is not likely to cause confusion” with S.C. Johnson’s marks, and that its goods are not “the same as or similar to [S.C. Johnson’s] goods/services and thus, are not likely to cause confusion with [S.C. Johnson’s] goods/services.”


An Even More Aggressive Attempt?

While that matter makes its way towards a trial before the TTAB, Off-White has prevailed – by default – in an arguably-even-more-aggressive opposition proceeding of its own.


In April, counsel for the buzzy brand sought to shoot down a pending trademark application filed by dental and medical healthcare product company Robell Research, Inc. for the word “Off” for use on “non-medicated dental preparations.” On the heels of Robell filing a trademark application for registration for “Off,” counsel for Off-White filed an opposition arguing that the brand would be damaged if Robell was granted a registration for “Off” for use on … toothpaste.


To be exact, Off-White claimed that its rights in the famous “Off-White” brand name (and relevant trademarks) would be diluted if Robell was granted exclusive rights in the mark for “non-medicated dental preparations for personal use, namely, gels and pastes for protection against staining; Tooth gel; Tooth whitening preparations; Toothpaste.” That proceeding officially resolved itself in Off-White’s favor in May when the TTAB issued a notice of default after Robell failed to respond to the opposition, and ultimately abandoned its application for the “Off” mark.