LVMH-owned Off-White has recently filed an opposition with the U.S. Patent and Trademark Office (USPTO)’s Trademark Trial and Appeal Board (TTAB) in an attempt to block New York-based Walker Wear‘s registration of WW XXL Athletic Walker Wear mark, according to reporting by The Fashion Law.
Representatives for Off-White are arguing the label has been harmed by Walker Wear’s claim that it has rights to the mark, and will be further damaged should USPTO agree to register the mark.
Off-White claims that Walker Wear LLC’s application for the WW XXL Athletic Walker Wear mark in October 2021 should also be blocked because Walker Wear LLC misrepresented the ownership of a separate “Walker Wear” mark, stating it was registered by Walker Wear LLC when it actuality it was registered in 2008 by company founder April Walker.
Further, Off-White argued that Walker Wear’s claim it’s been using the “WW XXL Athletic Walker Wear mark since May 1994 is false. Since then, Off-White alleges Walker Wear “discontinued its use in commerce of [the] mark with intent not to resume such use.” The filing points out Walker Wear failed to use the mark in commerce “for at least three (3) consecutive years after its alleged first use in commerce.” According to The Fashion Law, the break in usage of the mark is meaningful because a trademark holder is subject to losing rights to a mark if it cannot produce evidence it was use consistently and continuously.
The dispute between the labels began when Walker Wear filed a trademark infringement and dilution complaint against Off-White in August 2021, three months before label founder Virgil Abloh passed away from cancer. In the complaint, Walker Wear claimed an Off-White varsity jacket detailed with two Ws on the front of the jacket were “nearly identical” to the label’s WW XL Athletic mark design. Walker Wear made note of Abloh’s claim to a “three percent rule,” whereby a designer need only change an object by three percent to create something new.