Protect your trademark or lose it – Helly Hansen v. Off-White

To be granted protection a trademark must be used in commerce and defended by the trademark owner. A trademark can be almost anything that is used to identify the source of products but traditionally trademarks are symbols, words or short phrases. Trademark law grants a trademark user a set of exclusive rights when a trademark to identify the source of products. A trademark user can register their trademark with the Untied States Patent and Trademark Office to strengthen the rights associated with their trademark, but registration is not required. If someone other than the trademark owner brands goods with a trademark, in a way that causes consumer confusion, that can be considered trademark infringement. A trademark owner can request an injunction from a court to stop trademark infringement and a trademark owner can file a lawsuit to recover damages for trademark infringement which has happened.

A key point of trademark law is that a trademark owner must carefully monitor the use of their trademark in the marketplace. If a trademark owner allows other people to use their trademark without objection, the trademark owner’s right to claim the trademark is diminished.

The clothing industry is fiercely competitive. Companies expend significant time and money on developing their brands. A large part of the cost of a piece of clothing is the advertising and promotion of a brand, compared to the cost of the materials used to make the clothing. For this reason clothing companies are always looking for novel way to protect their clothing designs and prevent imitations. Copyright law and patent law do not offer clothing companies a good way to protect their products for various reasons. Trademark law will not protect clothing designs or decorative elements in the abstract, but if a trademark is used as a decoration on a piece of clothing that will grant the clothing some protection under trademark law in the United States. For this reason, clothing companies have turned to trademark law to protect their products.

A case which illustrates a clothing company attempting to use trademark law to protect their clothing products is HELLY HANSEN v. OFF-WHITE LLC, 1:18-cv-04755 (N.D.IL 2018). Helly Hansen is a clothing manufacturer based in Oslo, Norway. Helly Hanson owns U.S. Trademark Registration No. 1,454,335 for the HH Stripe Logo, which is a band of vertical stripes that are angled upward from left to right at about a 30 degree angle. Helly Hanson has been using this trademark since 1978. Off-White is a competing clothing company, founded in 2013 and based in Chicago, Illinois. Off-White began using a stripe pattern on its clothing which bears a strong resemblance to Helly Hason’s trademarked stripe pattern in 2014. Off-White then successfully registered a trademark on their stripe pattern in 2017.

In July 2018 Helly Hanson sued Off-White for trademark infringement. Helly Hanson alleges that Off-White adopted the Infringing Mark with knowledge of, and the intent to call to mind and create a likelihood of confusion with regard to, and/or trade off the goodwill of Helly Hansen and its HH Stripe Registration and that Off-White’s use of the Infringing Mark results in a likelihood of consumer confusion. Helly Hanson also alleges that Off-White’s use of the Infringing Mark constitutes false designation of origin under 15 U.S.C. § 1125(a)(1)(A). Helly Hanson requests that the court order Off-White’s trademark registrations be invalidated and all goods with the Infringing Mark be destroyed.

Off-White has not filed an answer yet but it will undoubtedly bring up the fact that Helly Hanson did not object to Off-White’s use of a striped pattern for 4 years. Illinois generally recognizes a 3 year statute of limitations on business torts. Also Helly Hanson will have to explain why it did not attempt to stop the registration of the infringing mark with the Untied States Patent and Trademark Office. Helly Hanson may have a difficult road ahead of them.

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