Wired situation: how a trademark litigation affects the fashion world

After long back and forth, the luxury label Off-White wins the rights to a – now famous – cable tie label. How did it come about and what arguments made the difference? A summary of the case:

A luxury fashion label has been fighting for three years to get the trademark registration of a label that is actually – according to this same label – supposed to be removed before the garments are worn. Specifically, it is about a red cable tie that is attached to the popular sneakers. Off-White designs these in collaboration with Nike. But: “Sneakerheads” did not think much of the recommendation to remove the cable tie before wearing them; they continued to wear the shoes including the cable tie.

Normal label or unmistakable brand representation?

Against this background, Off-White wanted to register the accessory as a trademark. After all, it was an unmistakable brand feature that had to be protected against counterfeiting. For years, however, the U.S. Patent and Trademark Office (USPTO) did not agree with this assessment: The cable ties were a decorative product component that had the functionality of a label, but not a distinctive design element that served to identify the brand.

Off-White disagreed: the cable tie is no different from normal logos that identify the manufacturer of a fashion item. It creates a clear link with the trade mark and thus fulfils the requirements for the distinctiveness of a product. According to Off-White, only with a registration is it possible to effectively protect oneself against plagiarism, which often exists in the luxury fashion sector.

“Brand” as a purchasing argument in the luxury sector

According to Off-White, it must also be kept in mind that a clear brand presentation can and is a weighty purchasing argument, especially in the luxury segment. As is well known, the concept of a brand product as a status symbol does not only apply in the fashion world. The fact that the sneakers, including cable ties, are also frequently worn by celebrities and fashion influencers should also contribute to the fact that the path from red cable ties to Off-White is short. These arguments are said to have finally led Off-White to success and thus to trademark registration.

We continue to watch the trademark situation in the luxury fashion world with interest; Off-White alone is involved in a few more matters with the USPTO and not alone in this. The attempt to register the slogan “For Walking” (including inverted commas) initially failed. It remains to be seen whether Off-White will make further attempts to obtain a trademark registration.

One thing is certain, however: it is a major legal effort for an accessory that should actually be removed before it is worn.