Can you “trademark” putting words in quotes? OFF-WHITE v. RASTACLAT

Can you “trademark” putting words in quotes? OFF-WHITE v. RASTACLAT

A trademark is something that signals to consumers the identity of a producer of a product.  The purpose of a trademark is to protect consumers from inferior quality goods. The first person to use a trademark to brand products is referred to as the senior user.  Subsequent users of a trademark are referred to as a junior user.  Trademark law grants a senior user the right to exclude a junior user from using a in a manner which is likely to cause consumers to be confused about the source of a product.  If a junior user brands goods in a way that is likely to lead to consumer confusion that can be considered trademark infringement.  A senior user can file a lawsuit to stop trademark infringement with an injunction and to get monetary damages for trademark infringement which has occurred.

In the Untied States trademark law is a hybrid of federal law, state law and common law principals.  A trademark owner can register their trademark to strengthen the rights associated with their trademark, however registration is not required for a trademark to be used in commerce and a senior user is still granted priority over a junior user.

Traditionally a trademark is thought of as a symbol, word, or short phrase, but anything that is used to brand products and distinguish products produced by manufacturer from products manufactured by competitors, can be eligible for trademark protection.  In the apparel industry trademarks are specifically important.  Apparel is highly dependent on consumer opinion which can change at a moment’s notice.  When an apparel brand is popular with consumers,  imitators will quickly move in.  If an apparel manufacturer does not strictly enforce its trademark rights against competitors, the apparel manufacturer’s brand can loose value overnight.

An example of an apparel manufacturer defending its brand from imitators is Off-White LLC v. RASTACLAT LLC, 2:19-cv-03518 (C.D.Cal).  The plaintiff in this case is a manufacturer of luxury apparel for men and women.  The plaintiff has collaborated with other designers and enjoys significant success in the highly competitive luxury apparel industry. The OFF-WHITE is recognized for its distinctive graphic and logo-heavy apparel designs, including, a unique design mark comprised of alternating parallel diagonal lines, which has been used on or in connection with OFF-WHITE Products since at least as early as 2013.  One of the distinctive features of  OFF-WHITE’s branding is placing common words in quotations.  For instance wallets are branded “CARD” and shoe laces are branded “SHOE LACES”.  The principal designer of the plaintiff is one Virgil Abloh.  Several of the plaintiff’s products are branded “Off-White C/O Virgil Abloh”.  The plaintiff has also branded some products by adorning them with a red zip tie.  The plaintiff has filed several federal trademark registrations to protect its quotation and red zip tie trademarks, however as of today many of them have not been granted registration status.

The defendant is a retailer of modestly priced apparel.  The defendant has branded many of its products with the phrase “Off-Clat c/o Rastaclat”, and placed other phrases in quotations.  The packaging which contains the plaintiffs products has a striking similarity to the plaintiff’s products and sometimes includes a red zip tie.  Several social media accounts have reviewed the defendant’s products and commented that the defendant’s products are knock-offs of the plaintiff’s products.  Also several online retailers have listings which reference the defendant’s products as “Rastaclat Off-Clat OffWhite Virgil Abloh White Bracelet” or “Off white Rastaclat review off-clat bracelet”.

When the plaintiff became aware of the defendant’s products in 2018 the plaintiff sent a cease and desist letter to the defendant and several retailers which sold the defendant’s products.  But, the defendant did not change its behavior to the satisfaction of the plaintiff.

The plaintiff filed a trademark infringement lawsuit against the defendant in April 2019.  As evidence of actual consumer confusion the plaintiff cites the social media accounts and online retail listings that use the plaintiff’s trademarks to describe the defendant’s products.

The plaintiff has a difficult case to prove.  The defendant’s are not using the same trademarks as the plaintiff, rather the defendant is placing its own trademarks in quotations.  While it is easy to prove trademark infringement when a trademark is directly copied, in this case it is the style of a trademark that is being copied.  Also, the evidence that the plaintiff cites to demonstrate consumer confusion cuts both ways.  Even though the social media accounts that review the defendant’s products compare the two company’s products, the defendant’s products are referred to as knock-offs which would seem to disprove consumer confusion.  Time will tell if the courts agree with the plaintiff.

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