Hop Off: Inside the Ongoing Trademark Battle Between Streetwear Brand Off-White and S.C. Johnson & Son Over Use of the Mark “OFF” - Fordham Intellectual Property, Media & Entertainment Law Journal
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Hop Off: Inside the Ongoing Trademark Battle Between Streetwear Brand Off-White and S.C. Johnson & Son Over Use of the Mark “OFF”

Hop Off: Inside the Ongoing Trademark Battle Between Streetwear Brand Off-White and S.C. Johnson & Son Over Use of the Mark “OFF”

For a company so committed to creating fashion that is avant-garde, Virgil Abloh’s Off-White is in the trenches of yet another trademark dispute. The streetwear brand is guided by the principle “everything in quotes,”1 and as evidenced by their long list of pending trademark applications, Abloh intends on doing just that.2 While Off-White is notorious for its ironic fashion pieces—such as a pair of boots with the words “for walking” printed on them or, even more ironically, a scarf with “scarf” stitched into the fabric3—the brand has recently sought to incorporate the element “Off” in more of its designs.4 In fact, the company has initiated over 20 trademark applications for stylized versions of the word—one of which is “OFF” written both horizontally and vertically inside of a circle (“‘OFF’ Cross Design mark”).5

Though Off-White plans to use the insignia on handbags and jewelry, cleaning products giant, S.C. Johnson & Son, was strongly against the mark’s registration and filed a notice of opposition with the United States Patent and Trademark Office (“USPTO”).6 In its notice, S.C. Johnson & Son contended that the “OFF” Cross Design mark too closely resembled the one it has used for several decades to identify its OFF! insect repellant brand.7 Additionally, S.C. Johnson & Son claimed that due the obvious similarities between their OFF! mark and Off-White’s “OFF” Cross Design mark, the two companies’ would ultimately convey the same commercial impression,8 even though they do not necessarily produce the same types of goods.9 The notice of opposition highlights that this would inevitably create confusion for consumers who “recognize[] the OFF! mark as identifying [S.C. Johnson & Son] as the source of the goods offered.”10 According to the cleaning supplies manufacturer, this notion is supported by the significant amount of time, money, and effort it has spent promoting its OFF! trademarks across the United States.11

Moreover, S.C. Johnson & Son is further troubled by the fact that, given the highly related nature of their OFF! trademark products and those delineated in Off-White’s “OFF” Cross Design application, both companies’ goods are “likely to be marketed and sold to the same consumers and move in the same channels of trade,”12 thereby leading to more potential misunderstanding.13 Finally, counsel for S.C. Johnson & Son argued that Abloh should be blocked from registering their trademark with the USPTO because Off-White’s products are in the “natural zone of expansion” for S.C. Johnson & Son’s OFF! brand.14 In essence, the “natural zone of expansion” theory broadens a trademark owner’s rights by extending their zone of protection beyond the goods and services that they actually offer to also include those that are reasonably related and likely to be associated with that particular trademark.15

Therefore, the question at issue is whether the OFF” Cross Design imprinted products that Off-White intends to produce and sell fall within the natural scope of possible expansion for S.C. Johnson & Son under the OFF! trademark.16 At first glance, one might think not—provided that Off-White is a fashion label and S.C. Johnson & Son’s OFF! trademark promotes insect repellant. However, as revealed by Off-White’s answer to the notice of opposition, Abloh admits that the “OFF” Cross Design mark would be used on more than just handbags and jewelry, but items such as fragrances, toilet water, bath soaps, cosmetics, essential oils, nail polish, and hair lotions as well.17 This muddies the waters because, now that Abloh intends to implement the design on goods that trickle into the realm of cleaning supplies and chemicals, the USPTO Trademark Trial and Appeal Board (TTAB) may find that Off-White’s registration impairs S.C. Johnson’s exclusive right to the OFF! trademark and, therefore, deny the application.18

  1. Kaitlyn Tiffany, The hottest fashion brand in the world was built on irony and $1,000 sweatshirts, Vox (Oct. 30, 2018, 12:30 PM), https://www.vox.com/the-goods/2018/10/30/18027074/off-white-timeline-history-luxury-streetwear-virgil-abloh [https://perma.cc/VPK7-QT46].

  2. See Off-White is Trying to Register One Specific Use of its Famed Quotation Marks, The Fashion Law (Sept. 19, 2019), https://www.thefashionlaw.com/off-white-is-seeking-to-register-one-specific-use-of-its-famed-quotation-marks/ [https://perma.cc/LCY9-H7DA].

  3. See Tiffany, supra note 1.

  4. See Off-White is Clashing With S.C. Johnson Over Their Respective “OFF” Branding, The Fashion Law (Oct. 13, 2020), https://www.thefashionlaw.com/off-white-is-facing-off-against-s-c-johnson-over-its-off-branding/ [https://perma.cc/QQ8K-R22F] [hereinafter Off-White is Clashing].

  5. See id.

  6. Id.

  7. See id; see also Notice of Opposition, S.C. Johnson & Son, Inc. v. Off-White LLC (TTAB 2019) [hereinafter Notice of Opposition].

  8. See Notice of Opposition, supra note 7.

  9. Off-White is Clashing, supra note 4.

  10. Notice of Opposition, supra note 7.

  11. See Off-White is Clashing, supra note 4.

  12. Notice of Opposition, supra note 7.

  13. See Off-White is Clashing, supra note 4.

  14. Notice of Opposition, supra note 7.

  15. See Ned T. Himmelrich, ‘Natural Zone of Expansion’ Broadens Trademark Rights, Gordon Feinblatt LLC (Aug. 20, 2020), https://www.gfrlaw.com/what-we-do/insights/‘natural-zone-expansion’-broadens-trademark-rights [https://perma.cc/FVK2-DGRR].

  16. See Off-White is Clashing, supra note 4.

  17. See Answer, S.C. Johnson & Son, Inc. v. Off-White LLC, No. 91251711 (USPTO filed Mar. 16 2020).

  18. See Off-White is Clashing, supra note 4.

Alexandra Machado

Alexandra Machado is a second-year J.D candidate at Fordham University School of Law and a staff member of the Intellectual Property, Media & Entertainment Law Journal. She completed a Bachelor of Arts in Political Science with a double minor in Spanish and Sociology at Wake Forest University.