Sometimes, when you hear stories about law, litigation and trademark issues in the fashion industry, you seriously wonder if, at some point, the longest ones will ever get their own series on Netflix. Off-White could be a great inspiration, especially for its trademark sagas that, in some cases, are still going.
In October 2020, for example, the brand, claiming that its use of quotation marks acted as an indicator of source and could therefore be considered as a trademark, lodged with the U.S. Patent and Trademark Office ("USPTO") a trademark application for the words "For Walking" in quotation marks for use on footwear. The request followed the one done in 2019 by the company for the words "Product Bag" for use on "tops as clothing; bottoms as clothing".
Yet, early in 2021, Shaunia Carlyle, an examining attorney for the USPTO refused to allow Off-White's application to move forward. In that case, Carlyle explained that the words "For Walking" on the footwear indicated indeed "a feature and purpose". The examining attorney stated that a mark becomes descriptive of the goods or services cited in the application "if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant's goods and/or services". Indicating a purpose of the goods (boots or sneakers are made for walking), the words "For Walking" weren't therefore considered as worthy of a trademark.
Carlyle also highlighted that "Adding punctuation marks to a descriptive term will not ordinarily change the term into a non-descriptive one".
When a brand is refused a trademark on these grounds, it can reapply later on, claiming it has acquired distinctiveness (in which case the brand in question has to submit evidence that the applied-for mark has become distinctive of applicant's goods, meaning that the applicant's extensive use and promotion of the mark has allowed consumers to associate the mark with the applicant as the source of the goods.
Off-White did so, but in September this year, was again rejected. In a newly filed response, the brand reapplied insisting on the quotation marks, considered as highly relevant to the perception of the brand, but also as something ironic. Off-White produced examples of articles that mentioned its use of quotation marks as something distinctive, highlighting that "the use of written quotation marks is a widely understood and recognized grammatical device for indicating irony and sarcasm."
Yet, while for Off-White's founder, the late designer Virgil Abloh, quotation marks may have been a sign of distinction and an ironic gesture that elevated the words to trademark, the examining attorney already explained when the USPTO first rejected the application that adding punctuation marks to a descriptive term does not ordinarily change the term into a non-descriptive one.
There is a precise reason why the USPTO keeps on rejecting the trademark application of words in quotation marks: if Off-White insists on the power of quotation marks to be turned into trademarks and eventually gets the required trademark, then it will start claiming rights in its use of quotation marks regardless of what words appear in between them. For the time being, the saga continues, so we will have to wait and see if the USPTO will deem that these boots are made for walking or "For Walking".
As for the USPTO examining attorneys, they will have to be very patient, as Off-White is extremely persistent when it comes to trademark applications. In March 2022, after a four-year battle with the USPTO, Off-White officially secured a trademark for its red zip tie (the red plastic seal that looks like a product tag) found across the brand’s shoes, apparel, bags, and other accessories, a trademark that was originally rejected and considered as a "decorative or ornamental feature of the goods" and therefore not functioning as a trademark "to indicate the source of applicant's goods and to identify and distinguish them from others."
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