After years of back-and-forth with the U.S. Patent and Trademark Office (USPTO), Off-White has finally been awarded trademark registration for the use of its signature red zip tie mark on its footwear.
The brand, founded by the late Virgil Abloh, saw the application denied several times by the USPTO over a nearly four-year period. Off-White began using the zip tie on its products in 2016 and submitted its first application for trademark in July 2018.
The zip tie regularly comes attached to Off-White products, including its much-hyped collaboration with Nike. Despite this, the application was met with pushback from the USPTO almost from the outset, with an examining attorney for the trademark office first claiming back in Dec. 2018 that the red zip tie could not be registered for a number of reasons, including a likelihood of confusion with already-registered marks.
Its original application stated that the red zip tie was to be featured on handbags, wallets, and backpacks along with tops, bottoms, headwear, and footwear. But counsel for Off-White eventually dropped all of the goods but footwear in Nov. 2020 as a “response to office action.”
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The description of the mark was subsequently narrowed quite a bit to reflect a more limited mark that consists of the specifically positioned “3D configuration of a zip tie with a substantially rectangular end, all in the color red as used on footwear.”
With this updated filing, Off-White submitted an amended drawing that shows the red zip tie as it is used on footwear products, closed and looped around a shoelace on the footwear product. The footwear product is drawn in dotted lines to show it is not a part of the claimed trademark.
According to the filing, Off-White also amended the description of the mark as follows: “The mark consists of a zip tie with a substantially rectangular end, all in the color red. The outline of a shoe is not claimed as part of the mark.”
Council for Off-White wrote later in the Nov. 2020 updated filing, “The Examining Attorney has provided no evidence that any other fashion brand does use, or has ever used, a red zip tie in this manner. Granting a registration for Applicant’s Mark would not put competitor fashion brands at a disadvantage, except that it would prevent competitors from trading on the significant reputation of Applicant.”
This win adds to Off-White’s range of patents that include several logos, diagonal lines, and its impending filings for quotation marked goods.
A representative for Off-White had no comment when asked by FN.
