Virgil Abloh, the Creative Director of fashion house Off-White and currently one of the biggest designers in the fashion industry, may have some important legal decisions to make in the near future.
Abloh has been using quotation marks around everything he associates with the Off-White brand. Whether it is a design feature on a shoe, a store name, or just different objects on his Instagram account, the quotation marks have become his new go-to, and his devoted fans are noticing the trend. As such, the question becomes: can Abloh’s use of quotation marks be protected through trademark law given its use for commercial purposes?
According to Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), trademark law is based on whether or not there is a “likelihood of confusion” between the proposed trade-mark and another mark already registered or in a prior pending trade-mark application owned by someone else. The United States Patent and Trademark Office (USPTO) “determines that a likelihood of confusion exists when both (1) the marks are similar, and (2) the goods and/or services of the parties are related such that consumers would mistakenly believe they come from the same source.”
The USPTO has a public database on which anyone can search marks that are either registered or pending registration. Unfortunately for Abloh, quotation marks have been used as a signifier in the past by other brands, based on a search of USPTO.
However, for Abloh, it seems the use of quotation marks is a way to make the Off-White brand more distinguished for the time being, as opposed to securing a long-term intellectual property right. This means that he may not even be concerned about legally protecting his mark and going through the USPTO.
In a recent interview, Abloh explained, “You can use typography and wording to completely change the perception of a thing without changing anything about it. If I take a men’s sweatshirt and write “‘woman’ on its back, that’s art.” In fact, his recent “FOR WALKING” boots for women, pictured below, have become increasingly popular and are usually out of stock, perhaps in part owing to his creative use of typography.
Though at first glance it may seem odd for a brand, or anyone for that matter, to seek to claim rights to the use of quotation marks, this may not be completely shocking. In fact, according to The Fashion Law, Off-White’s general logo consists of diagonal stripes, pictured below, which are often seen on crosswalks and street signs. Nevertheless, the Off-White legal team filed for federal trademark registration, which is still pending.
It is not difficult to make sense of this. Trade-mark law protects the use of words, names, symbols, or any combination thereof, used for commercial gain as a means of brand identity. Furthermore, as noted above the only limitation on receiving this protection is whether there is a “likelihood of confusion.”
As such, originality is not a trademark requirement, so the fact that the use of quotation marks or diagonal stripes are ubiquitous is not fatal for Abloh’s brand. Furthermore, since Off-White is increasingly becoming popular, consumers are more likely to associate these designs with Abloh, and Off-White as a result. Therefore, the “likelihood of confusion” element mentioned above should not be a difficult hurdle for Abloh, either.
Finally, US trademark law operates on a first-to-use basis, as opposed to a first-to-file one. This means that a registration with the USPTO is not necessary—though it is beneficial—to gain common law protection of the design. The use of the mark for commercial gain, which is what Abloh has been doing for the past several months, is, indeed, what he should be doing.
Nevertheless, it will be interesting to see whether Abloh actually pursues legal protection.
Saba Samanian is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.
