The legal saga between Virgil Abloh and the U.S. Patent and Trademark Office (USPTO) continues after a new report suggests that Off-White's July 2018 application to trademark its signature red zip tie has hit another setback.
According to The Fashion Law, the USPTO's examining attorney, Linda M. Estrada has stated that the signature detail is functional, which barred it from registration since “functional matter cannot be protected as a trademark.” Estrada has also indicated that Off-White’s use of the red color on the zip tie, which the brand claims as part of the trademark, is “not inherently distinctive,” suggesting that it's not automatically capable of identifying the source of a product. The detail has been featured on his own Off-white foorwear and apparel as well on his ongoing Off-White x Nike collaborations.
Estrada stated in the Office Action that in order for the zip tie to be eligible for registration, Off-White would need to provide evidence suggesting that the average consumer will be able to easily link the red tie to a single source, which was exactly what the brand tried to do this summer. Back in June, counsel for Off-White explained that the "red zip tie is far from functional," as the zip tie is “neither absolutely necessary nor indispensable to the purpose of Off-White’s products,” and is used “solely as an indicator of source.” Off-White’s counsel pushed back against Estrada’s consideration of the fact that the Off-White zip tie is “the common configuration for zip ties, which may be used in a variety of industries including for labeling.”
The Office Action-Response can go on for as many as three rounds with the new examining attorney, Verna Ririe also refusing to register the mark. Ririe echoes the sentiment of Estrada, stating that the zip tie is still not registerable as it "appears to be a functional design," while using examples of red zip ties available for sale on various sites to support that “neither the design nor the color of [Off-White’s] ties is distinctive … [or] used for [source] identification purposes."
Off-White now has six months to respond to Ririe's refute. After the brand's counsel provides a response, the USPTO will have the ability to issue a third and final Office Action or it may move forward in the application process. Stay tuned for updates.
