Offwhite Prods., LLC v. Off-White LLC

• Decision Date: 20 August 2020
• Docket Number: 19 Civ. 6267 (PAE)
• Citation: 480 F.Supp.3d 558
• Parties: OFFWHITE PRODUCTIONS, LLC, d/b/a OffWhite Co., Plaintiff, v. OFF-WHITE LLC, Defendants.
• Court: U.S. District Court — Southern District of New York

480 F.Supp.3d 558

OFFWHITE PRODUCTIONS, LLC, d/b/a OffWhite Co., Plaintiff,

v.OFF-WHITE LLC, Defendants.

19 Civ. 6267 (PAE)

United States District Court, S.D. New York.

Signed August 20, 2020

Joel Geoffrey MacMull, Mandelbaum Salsburg PC, Ronald David Coleman, Dhillon Law Group Inc., New York, NY, for Plaintiff.

Abigail Jane Marie Hoverman, Maile Hitomi Solis, Nicholas Laird, Robert E. Shapiro, Barack, Ferrazzano, Kirschbaum, Perlman & Nagelberg, L.L.P., Chicago, IL, Jason M. Drangel, Kerry Brenae Brownlee, Epstein Drangel LLP, New York, NY, for Defendant.

OPINION & ORDER

PAUL A. ENGELMAYER, District Judge:

Plaintiff OffWhite Productions, LLC, d/b/a OffWhite Co. ("OffWhite"), brings this action against defendant Off-White, LLC ("Off-White") for infringement of its registered trademark OFFWHITE CO.®, which OffWhite uses "in connection with its marketing, product design and related services." Dkt. 30 ("Amended Complaint" or "AC") ¶ 1. OffWhite brings three claims: for trademark infringement in violation of 15 U.S.C. § 1114(1), false designation of origin and false description in violation of 15 U.S.C. § 1125(a)(1)(A), and common law unfair competition under New York law.¹ Pending now is Off-White's motion under Federal Rule of Civil Procedure 12(b)(6) to dismiss the AC for failure to state a claim. For the following reasons, the Court grants the motion and dismisses the AC in its entirety.

I. Background

A. Facts²

1. The Parties

Plaintiff OffWhite is incorporated in New Jersey, with its principal place of business in New York, New York. AC ¶ 4. OffWhite "provides wholistic [sic] creative solutions to creators of new goods and services integrating innovative marketing, advertising, and other business approaches to product and brand development." Id. ¶ 9. "[A] key aspect of plaintiff's marketing and product design and branding solutions is to aid in the distribution of huge volumes of original content on digital social publishing platforms." Id. ¶ 10. The company has done business as "OffWhite" "since at least July of 2001." Id. ¶ 11. To market its own business-to-business marketing and branding services to potential customers, OffWhite maintains a website, www.offwhitedesign.com; a Twitter account, @offwhitedesign; and a social media presence on Facebook, Instagram, and Behance. Id. ¶¶ 11–12. OffWhite has also "widely promoted" itself through "online display and advertising campaigns across a variety of Internet and mobile platforms," resulting in "many thousands of viewer impressions on its" website. Id. ¶¶ 13–14.

The AC further alleges that "since 2004" OffWhite has added "OFFWHITE branded products to its panoply of offerings," id. ¶ 15, "most recently" by "offering its own innovative consumer products under the OFFWHITE trademark by bringing to market a line of innovative durable goods for consumers," id. ¶ 16, "includ[ing] items such as housewares and toys," id. ¶ 17.

Defendant Off-White is incorporated in Illinois, with its principal place of business in Nashville, Tennessee. Id. ¶ 5. It is the "American division of a Milan-based fashion house." Id. ¶ 1. Off-White was founded in 2012 and rapidly gained prominence under creative director Virgil Abloh. Id. ¶¶ 24–25. Off-White "is known for offering apparel such as $1,000 sweatshirts as well as collaborations and endorsements from a wide range of celebrity creators and admirers." Id. ¶ 25. Its products are sold by luxury retailers and it has been profiled by "major media outlets such as the New York Post" and fashion industry publications like Vogue. Id. ¶ 54. The AC alleges, on information and belief, that "more recently," Off-White "has begun to market, and sell," inter alia , "home furnishings, housewares and stationery" under the Off-White brand. Id. ¶ 26. Off-White operates the website www.off---white.com as well as its own retail stores in the United States. Id. ¶¶ 29–30.

2. OffWhite's Trademark

In March 2014, OffWhite applied to register OFFWHITE CO. as a word mark with the U.S. Patent and Trademark Office ("PTO"). Id. ¶ 22. The registration included the following description of services:

Advertising and marketing services, namely, creating corporate and brand identity and strategy for others ; advertising and marketing services, namely, promoting the brands, goods and services of others ; brand concept, brand design in the nature of creative marketing design, brand development services and brand strategy services in the nature of the development of marketing strategies and concepts for corporate and individual clients ; brand evaluation services; brand imagery consulting services; brand positioning services; branding services, namely, consulting, development, management, marketing and strategy in the nature of developing marketing strategies and concepts of brands for businesses and/or individuals ; providing business research and insight in the field of brand strategy, brand creation, brand development, and the selling and marketing of brands; innovation consulting services, namely, advising others in the areas of brand creation, brand development, brand strategy and the selling and marketing of brands ; innovation consulting services, namely, advising others in the areas of product design, product development and production, packaging design and product and packaging strategy ; innovation consulting services, relating to products using social media to assist others in the sale and distribution of their products and services.

Id. (quoting U.S. Reg. No. 4652026) (emphasis added). OffWhite's application to register OFFWHITE CO. was published in September 2014 and granted in December 2014. Id. ¶ 23.

3. Off-White's Alleged Infringement

OffWhite alleges that Off-White's "rapid brand growth has sent the range of products and other offerings under its infringing Off-White brand hurdling [sic] headlong into the natural zone of expansion of" its own OffWhite brand. Id. ¶ 18. OffWhite cites an "exploding variety of Off-White branded products includ[ing] a wide range of durable consumer goods such as housewares and products." Id. ¶ 19. The AC gives one example of this: "a product [Off-White] identifies as a ‘yellow industrial belt,’ meant as a fashion accessory," id. ¶ 20, which the AC alleges consumers are likely to confuse with the "set of functional construction tools designed for children" sold by OffWhite, id. ¶ 17. The AC alleges that "consumers making actual purchasing decisions are likely to confuse [Off-White's] wide variety of goods with those of [OffWhite]." Id. ¶ 20. The AC alleges that this "constitut[es] reverse confusion" and is likely to "result[ ] in the eventual extinction of" OffWhite's trademark and brand. Id.

OffWhite alleges further injury by Off-White's "social media, website promotion, public relations, SEO and celebrity-outreach campaigns." Id. ¶ 50. These, it alleges, "have succeeded in displacing plaintiff's URL offwhitedesign.com from Google's top search results," id. , led to the creation of a Wikipedia entry for "Off-White (Company") which discusses Off-White, id. ¶ 51, and caused "many thousands" of Twitter posts using the hashtags #OffWhite or #OFFWHITE to be tweeted in reference to Off-White, id. ¶¶ 45, 48–49.

Finally, OffWhite alleges that on January 2, 2019, some two months before OffWhite sent a cease and desist letter, id. ¶ 37, Off-White filed an application to register a design "that is unmistakably similar to a logo used by [OffWhite] but not registered[.]" Id. ¶ 43. The AC alleges that the two designs are "confusing similar" and characterizes Off-White's action as a "spite" registration. Id. ¶ 44.

B. Procedural History

On July 7, 2019, OffWhite initiated this action, Dkt. 1, and on July 22, 2019, successfully filed its Complaint, Dkt. 9. On September 9, 2019, Off-White filed a motion to dismiss, Dkt. 27, and a supporting memorandum of law, Dkt. 28. On September 30, 2019, OffWhite filed its Amended Complaint. AC. On October 21, 2019, Off-White filed its motion to dismiss the AC, Dkt. 31, and a supporting memorandum of law, Dkt. 32 ("Def. Mem."). On November 15, 2019, OffWhite filed its opposition. Pl. Opp'n. On November 26, 2019, Off-White filed a reply. Dkt. 39 ("Reply").

II. Legal Standard for a Motion to Dismiss Under Rule 12(b)(6)

To survive a motion to dismiss under Rule 12(b)(6), a complaint must plead "enough facts to state a claim to relief that is plausible on its face." Bell Atl. Corp. v. Twombly , 550 U.S. 544, 570, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007). A claim will only have "facial plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged." Ashcroft v. Iqbal , 556 U.S. 662, 678, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009). By contrast, a complaint will not "suffice if it tenders naked assertions devoid of further factual enhancement." Iqbal , 556 U.S. at 678, 129 S.Ct. 1937 (internal quotation marks and alterations omitted). Such factual enhancement is necessary to "nudge[ ] [a] claim[ ] across the line from conceivable to plausible." Twombly , 550 U.S. at 570, 127 S.Ct. 1955.

Although this standard "does not impose a probability requirement at the pleading stage," it does require a complaint to plead "enough fact[s] to raise a reasonable expectation that discovery will reveal evidence" to support plaintiff's claims. Id. at 556, 127 S.Ct. 1955. Where a complaint fails to do so, "[t]his basic deficiency should be exposed at the point of minimum expenditure of time and money by the parties and the [C]ourt." Id. at 558, 127 S.Ct. 1955 (ellipsis omitted) (quoting 5 Wright & Miller, Federal Practice and Procedure § 1216 ). Otherwise, "the threat of discovery expense will push cost-conscious defendants to settle even anemic cases before reaching those proceedings."

Id. at 559, 127 S.Ct. 1955. "Determining whether a complaint states a plausible claim for relief [is] ... a context-specific task that requires the [Court] to draw on...