Ariel Goldberg a 1L JD candidate at Osgoode Hall Law School.

French fashion brand garments featuring Botticelli’s Birth of Venus are heading off the rack and to legal battle. (“Uffizi”), based in Florence, Italy, are pursuing legal action against Jean Paul Gaultier for “illicit” unauthorized use of Botticelli’s Birth of Venus which violates Italy’s (Code of the Cultural and Landscape Heritage )(the “Italian Code”). The Code of the Cultural and Landscape Heritage’s legal force is separate from copyright laws and remains in effect when copyright protection does not.

Jean Paul Gaultier’s “Le Musée” capsule collection uses Botticelli’s Birth of Venus on including a scarf, skirt, sleeveless top and trouser. Jean Paul Gaultier originally used Birth of Venus in its S/S 1995 Collection on a sheer mesh top. In , Uffizi sent a cease-and-desist in response to Jean Paul Gaultier’s current use of the Birth of Venus, but the fashion brand never replied and continued its unauthorized use.��

(Photo Credits: ; )

The Italian Code , which came into effect in 2004 and was updated in 2016, . The Italian Code protects which can be historical, artistic, ethno-anthropological and archaeological. , objects require authorization and a licence fee to be used commercially by third parties regardless of whether the work is in the public domain. of the images by private individuals for the purpose of creative expression, study, research and enhancing cultural heritage are excluded from these legal obligations.

The refers to works not protected by copyright, which means the works can be used without acquiring permission or paying a fee. Generally, copyright protection expires after a period following the death of the author. In Canada, under the copyright protection remains for the life of the author and 50 years following the end of the calendar year the author died in unless otherwise stated within the Act. ��

The Birth of Venus is in the public domain because it was created by Botticelli in the mid-1480s. However, Gaultier allegedly violated Italy’s Cultural Heritage Code by proceeding with commercial use of the image without authorization and paying a licence fee. Jean Paul Gaultier’s use would not likely qualify for ��creative expression exception because of its commercial nature and because Jean Paul Gaultier is a fashion brand rather than private individual. , a lawyer and comparative cultural heritage, art and fashion law scholar, states that Jean Paul Gaultier could argue that some uses are of Botticelli’s Birth of Venus which would exclude the use from the ��

Uffizi’s Director Eike Schmidt commented that such as Leonardo da Vinci, Caravaggio, Titian, Raphael and Giotto di Bondone. The prevalent use of Uffizi’s artworks despite Italian law led to to police whether artworks are used to sell products, especially on social media. This hyperfocus on social media reflects the double-edged nature of social media, providing a greater connection through increased sharing and platforms while also allowing easier access and subsequently, easier appropriation of works.

Last year, a similar conflict emerged from the use of the Birth of Venus. online guide to erotic art which used the artwork. Hopefully, the Birth of Venus does not birth more legal issues in the immediate future. ��

The post Jean Paul Gaultier, Birth Your Own Venus appeared first on IPOsgoode.

Ariel Goldberg is an incoming 1L JD candidate at Osgoode Hall Law School.

On June 21, 2022, the U.S. Patent and Trademark Office (“USPTO”) granted The Ohio State University trademark protection for the most common English word: . However, the fashion house Marc Jacobs has a pending trademark application for an identical “T�ᷡ” mark. Both “T�ᷡ” marks are filed under the under the Nice classification system, which specifies trademark protection for uses on clothing and headwear. The “T�ᷡ” marks created a ‘the’ mess and a concern about enforcing trademark rights for a common word.

, Ohio State University began using ‘the’ to avoid the acronym “OSU”, which was identical to Oregon State University and Oklahoma State University. To avoid confusion, Ohio State University rebranded itself as The Ohio State University. Due to the humorous nature of the rebranding, The Ohio State University began being referred to as “T�ᷡ” including on .

The Ohio State University’s trademark protection for the “T�ᷡ” mark was not an easy feat — it took three years. , The Ohio State University filed a trademark application for the “T�ᷡ” mark with the USPTO. However, the USPTO initially rejected the trademark application for two reasons. the USPTO argued that the “T�ᷡ” mark was not functioning as a trademark because it was used by The Ohio State University ornamentally on clothing rather than as a source indicator. the USPTO highlighted a potential refusal on likelihood of confusion because Marc Jacobs filed a trademark application for an identical “T�ᷡ” mark on clothing items earlier than The Ohio State University. A full breakdown of these refusals and the corresponding responses can be read in the IPilogue article by Claire Wortsman.

While The Ohio State University secured a trademark win, there is now a concern about enforcing trademark rights over such a common term. In theory, the trademark protection grant broad enforcement over the term ‘the’. Instead, the trademark protection to unauthorized uses of the mark that confuse consumers of source. Further, the trademark protection exists with other trademarks that include the term ‘the’. Therefore, The Ohio State cannot prevent the use of ‘the’ in and including those in the collegiate clothing market like .

On the other hand, trademark bullying is a widespread tactic to enforce and maintain trademark rights. The USPTO defined as the practice of using trademark rights to intimidate businesses beyond what trademark protection allows. While trademark enforcement is necessary to avoid a , there is a fine line between suitability and aggression. For example, trademark professor Alexandra J. Roberts the drink company Monster’s tendency to stop any use of the word “monster.” ��Therefore, The Ohio State University could aggressively and overbroadly target uses of the term “T�ᷡ”.

Moving forward it will be interesting to see how The Ohio State University enforces their trademark rights. Hopefully, the trademark registration marks the “T�ᷡ” end.

The post “T�ᷡ” End: The Ohio State University Registers “T�ᷡ” Trademark appeared first on IPOsgoode.

Ariel Goldberg is an incoming 1L JD candidate at Osgoode Hall Law School.

While Hailey Bieber’s new skin care brand promises “” the brand itself has a blemish: . On June 21,2022, Rhode-NYC, LLC. (“Rhode-NYC”) in the U. S. District Court for the Southern District of New 91��ɫ against Hailey Bieber and her companies RHODEDEODATO CORP. and HRBEAUTY, LLC for trademark infringement. Rhode-NYC is a founded by two women entrepreneurs in 2014, whereas Hailey Bieber’s launched in June 2022 during .

Rhode-NYC that Hailey Bieber’s use of her middle name “Rhode” as the name of her skin care brand is creating market confusion and potential harm to its goodwill and reputation. ��Rhode-NYC claims that for “rhode” were immediately populated by Hailey Bieber and her companies’ brand as evidence of source confusion. consumers are tagging the wrong Rhode brand on Instagram content. This is a case of where the junior user of a similar mark, usually with more resources, creates confusion that a senior’s goods and services originate from the junior user. Hailey Bieber d her fame and social media following, and that of her husband Justin Bieber’, to immediately establish her brand.

Hailey Bieber and her companies’ trademark applications’ history suggests an awareness of Rhode-NYC’s prior trademark rights and the brand confusion that would result from the existence of both brands. , Hailey Bieber and her companies attempted to purchase the RHODE mark from Rhode-NYC after filing an application with the US Patent and Trademark Office (“USPTO”) for the use of “Rhode” on clothing. Then, , Hailey Bieber and her companies filed an intent-to-use trademark application for RHODE as a word mark and stylized word depiction for use in skin care. Notably, Rhode-NYC the 2020 application.

While the two brands registered the RHODE mark for different uses under the system, that expansion of either brand increases the potential for harm because the uses are in adjacent industries. �� Hailey Bieber and her companies are filing trademark applications outside cosmetics and promising Rhode clothing. Following the of celebrity brands, Hailey Bieber’s Rhode is unlikely to remain in the realm of skin care. For example, the beauty brand developed the line which includes apparel and accessories such as a hoodie. In addition, that Hailey Bieber and her companies’ use of the RHODE mark prevents Rhode-NYC’s own intentions to enter the beauty and lifestyle market.

The lawsuit over the RHODE mark demonstrates the trademark implications of the rise of celebrity brands. Specifically, how celebrities’ existing fame impacts secondary meaning and the importance of considering trademark rights in industries that would be a natural extension of a brand. Ultimately, Rhode-NYC co-founders are only attempting to protect their brand, not to harm Hailey Bieber. They explained in an Instagram statement,

The post Long “Rhode” Ahead, Hailey Bieber appeared first on IPOsgoode.

Photo by Francois Le Nguyen ()

Emily Chow is an��IPilogue��Writer and a 1L JD Candidate at Osgoode Hall Law School.���� �� ����

��

2022 is primed to be an important year for humanity’s actions against global warming. COP26 (Conference of Parties) . It generated momentum that must continue to meet the goal of the by 2050: to reduce the Earth’s temperature by 1.5°C. 196 Parties adopted this internationally binding treaty. With the additional challenges brought forth by COVID-19, (net)zero-carbon solutions urgently need to be implemented across all levels and structures. The from this collective responsibility to reduce greenhouse gas emissions. It has the capacity to usher in radical, life-saving changes. One way is through the

According to the World Economic Forum, eight industries generate : agriculture, construction, fashion, fast-moving consumer goods (“FMCGs”), electronics, automotive, professional services, and freight. This article discusses the role of fashion in climate change, and more importantly, highlights some textile innovations and organizations demonstrating the core values of circular economies.

Circular Economies: An Overview

A “circular” economy is more than a corporate citizenship buzzword or a . The three key pillars, or goals, supporting circular economic systems are: to. True circular production generates products and materials that can be reused, repaired, or remanufactured, thereby eliminating the concept of “waste” generated through consumer capitalism. These systems emulate what is inherent within nature’s ecological systems, such as and or cycles.

The Case for Fashion

Fashion, and by extension any forms of creative self-expression, potentiate important sociopolitical spaces for and individuals. Fashion can be , and . It can be responsive to or representative of . Fashion coalesces and will continue to so long as culture exists. It is also plain fun to feel good in what you’re wearing and for your clothing to represent you.

The fashion industry has roots across including (pun intended), retail, , , . Remedying the supply chain can , which struggle to fund expensive decarbonization efforts given their low profits relative to high emissions. Consumer-facing industries like fashion generate higher profits per ton of emissions, and thus can pass along decarbonisation costs in .

Along with the benefits of a circular economic system come concerns of and the privilege inherent in purchasing an expensive item upfront. Not to mention, the capacity to make climate-informed decisions further depends on sizing and access inclusivity for all ���ǻ徱���— of the fashion industry. However, many and have demonstrated the power in , , to one of slow fashion. , much of which is spurred by and a culture of consumption (think of TikTok or , hauls, ‘shop with me’ videos, negative associations of wearing something twice, etc.).

While the solution isn’t perfect, as an individual starting point, we can begin to unpack the small ways we as individuals can reassess our spending habits. Some mindfulness questions we can make a habit of asking ourselves are: What about [item] do I like or dislike (e.g., price, fit, colour, material)? Do I have anything similar? Can I get this second-hand? Will this material/style last several seasons? Do I see myself wearing this a few years from now?

Ultimately, structural change from the top-down must also occur to remedy our current climate. Yet investments made towards technological innovation and zero-emissions solutions have already proven to be profitable, sustainable, and . Furthermore, the collective push towards , , business certifications (such as , ), and is extremely promising.

Fashion’s Patented Innovations

I am really looking forward to seeing how the above movements evolve and respond to the coming year ahead. I am also excited about the increased adoption of patented materials and products! The production of synthetic textiles, garment-making, and the supply chain generates . Introducing nature-based solutions in agriculture and textile processing will be key to reducing greenhouse gas emissions.

, , , and are a few companies building towards a circular economy in an exciting way.

Mycoworks is a San Francisco-based company with a for Fine Mycelium that has developed a called REISHI: a made-to-order, vegan, and biodegradable yet durable leather. Last year, they made headlines with their , whose classic “Victoria” style was remade with Fine Mycelium and named .

AlgiKnit makes patent-pending kelp-based yarns and textiles in New 91��ɫ. Their closed-loop product life cycle allows them to break down end products to be remade into new ones. This seaweed-based yarn allows manufacturers to excise highly toxic chemicals from the treatment process, protecting workers from dangerous and . AlgiKnit produced a , and one can only imagine the streetwear implications this new material could have. Furthermore, the company announced the opening of an , where they will work with global brands to adopt new biotechnological textile innovations.

Lenzing’s TENCEL Lyocell and Modal fibres are fibres originating from responsibly managed forests in Austria. They use a non-woven spinning process that recycles the water and solvents at a rate of more than 99%. These fibres have been certified biodegradable and compostable

ALT TEX, a homegrown Toronto start-up, is a former client of the IP Innovation Clinic at Osgoode Hall Law School. Founders Myra Arshad and Avneet Ghotra have developed a novel bio-polymer technology that re-engineers sugars extracted from food waste into a fibre substitute to , which is made of plastic. ALT TEX’s closed-loop, biodegradable, and carbon neutral textile is a game-changer with the potential to replace polyester entirely, which makes up over 60% of textile manufacturing.

Further Engagement:

Aja Barber’s Consumed, a book on the textile industry’s racist, colonial, and exploitative history, and how to empower yourself by unlearning the mentality of mass consumerism:

Intersectional Environmentalist, a climate justice community centering BIPOC and historically excluded voices:

Social/climate activists Stevie (aka ), Summer Dean ()

Second-hand, Consignment and Thrift stores (to name a few!): , , Facebook Marketplace,

Fashion Impact Fund, supporting women entrepreneurs and the fulfillment of UN’s Sustainable Development Goals:

Ecologi, a climate-positive investment subscription where you can support environmental projects as a business or individual supporter:

The post Biotech of the Future: Fashion’s Role in Climate Change appeared first on IPOsgoode.

Photo by Tommao Wang��

Ariel Goldberg is a third-year undergraduate student at 91��ɫ.

For most, Tiffany’s robin’s-egg blue box immediately represents luxury jewelry. However, British artist Stuart Semple considers Tiffany Blue as being held captive through trademark law. To , Semple created 150 ml tubes of matte acrylic paint named which replicates Tiffany & Co’s signature hue.

Semple has been , with previous paints replicating trademarked colours including , , and . His is to increase the possibilities within art by making accessible what he claims are unattainable colours. Semple has pushed his commentary further by preventing individuals who hold registered colour trademarks from purchasing specific paints on his e-commerce website. Now, Semple’s most recent paint, Tiff, targets Tiffany & Co by sharing the brand’s iconic blue with all artists.

was created in 1873 by Charles Tiffany and John Young and has been registered as a colour trademark in the U.S since 1998. colours were outside the scope of trademark protection. The Lanham Act—the federal trademark statute in the U.S—does not include colour in the statutory definition of trademarks. In the 1995 decision, the U.S Supreme Court held that a colour could be registered as a trademark but required that the colour’s use be non-functional and that it has a In other words, consumers must associate the colour with a single source.

While Tiff paint has sparked conversation about monopolizing colours, Semple’s strong language on his e-commerce website and social media posts overstates the Tiffany & Co’s trademark rights. Semple wrote in an Instagram caption that Tiffany Blue is “trademarked in every category” and that However, colour trademarks are not synonymous with ownership of the colour. Trademarks are generally registered in connection to specific goods and services, which are divided by industry under the global system. Tiffany & Co has a multi-class registration for Tiffany Blue, but these are all narrowly defined. Tiffany Blue is registered for its use on “jewelry pouches with drawstrings” in Class 14. The trademark covers uses of the colour that would reasonably confuse the public to believe Tiffany & Co was the source.

Essentially, trademarks operate as a source indicator. Colour trademarks protect brands if the use of the colour in connection to specific services or goods would confuse customers. Christian Louboutin holds trademark rights for the use of Pantone 18-1663TP on shoe soles and Hermès maintains trademark rights for the use of a specific orange on packaging. Again, trademark protection is granted over the use of the colour in relation to specifically defined goods and services. It is not protection for the use of the colour on anything and everything.

In addition, colour trademarks are not effortlessly granted; it is difficult to gain monopoly over a colour. It can take time to develop the required secondary meaning. In the case of , The New 91��ɫ Sun reported the iconic nature of Tiffany & Co’s blue boxes in 1906, which is a significant time frame to be using the colour in relation to packaging and jewelry. Essentially, the colour’s use was so well known it was functioning as a source indicator before protection was granted. Even if secondary meaning is established, the colour which means that the colour cannot be essential to or a characteristic of the good or service. The functionality doctrine protects competitors against a disadvantage. Ultimately, there are safeguards to granting a colour trademark which prevents widespread and overly broad monopoly of colours. Further, rights are limited to the consistent use of the colour.

Tiffany has yet to respond to Semple’s paint. Regardless, Semple plans to continue “liberating” Tiffany Blue. He , “I see the art materials as more of a cultural critique, a piece of critical art [rather] than a business.” While Semple’s cultural critique exaggerates the protection granted through colour trademarks, Semple has started a conversation. He has also shown the importance in recognizing the limitations and safeguards in colour trademarks.

The post The Controversial Tiffany Blue appeared first on IPOsgoode.

Photo from Nike

Alexandria Lewis & Ian Rothweiler are JD Candidates at Southwestern Law School. This article was originally written as a requirement for Victoria Burke and John Begakis’ course on Fashion Law.

Trademark Infringement / Anti-Dilution – Nike v Warren Lotas

Warren Lotas partnered with Jeff Staple to "reinterpret" Staple’s original 2005 collaboration with Nike on the classic Nike Dunk shoe. Nike wasted no time and quickly filed a trademark infringement and anti-dilution lawsuit. The shoes and respective trade dress were nearly identical replicas of the original Dunks, so Nike had a strong case that the Lotas shoes were likely to confuse the general public as to their origin, source, sponsorship, or affiliation with Nike.

As a defense to the trade dress rights infringement claims, Lotas claimed that the tread on the sole of the shoes served a utilitarian function because they are essential to their use and purpose, and thus the quality of the sole.

Staple, who has a history of working for Nike and is the registered owner of the Staple Pigeon brand (seen on Lotas shoes), was left out of the litigation between Nike and Lotas. This is strange, as he was a co-partner in the Lotas product and his trademark pigeon is part of the trade dress of the allegedly infringing shoe. Lotas effectively received constructive approval from Staple to go forward with the Dunk lookalike.

Not only was Nike seeking injunctive relief to enjoin Lotas from selling the allegedly infringing sneakers, but also monetary damages. It is hard to imagine that the existence of these sneakers will damage Nike’s brand (worth $160 billion) enough to warrant monetary damages. The unfortunate reality for Lotas is that Nike has unlimited resources to take on nonstop litigation against designers, manufacturers, and distributors to protect their trademarks. This creates a chilling effect that moves up the supply chain, instilling fear of a pending Nike lawsuit among all involved parties. If trademark law ultimately serves to protect the consumer, do these disputes really put the consumer at risk or is Nike just flexing their muscles and depriving many would-be purchasers of new and potentially more appealing designs because they can?

Photo from MSCHF

Trademark Infringement - Nike v MSCHF

MSCHF, the Brooklyn-based art collective known for distorting the look and feel of well-known products and services, employs several risqué and even arbitrary design methods. Just look at its squeaking rubber chicken bong and YouTube channel presenting videos of a vat of mayo or a photograph of Pete Davidson. Needless to say, MSCHF reimagines popular items and brands to offend more conservative sensibilities.

In early 2021, MSCHF leaned into its disruptive attitude by collaborating with rapper Lil Nas X to craft 666 pairs of Nike Air Max 97 shoes with a Satan-themed twist. The expensive sneakers featured an inverted cross and a bronze pentagram charm embossed with “LUKE 10:18”, a Bible verse which reads “I saw Satan fall like lightning from heaven”. The design model was thought up to promote the Old Town Road artist’s devil-themed music video, Montero (Call Me by Your Name), as well as to increase awareness about MSCHF’s wicked genius.

Most Nike enthusiasts were bummed when the shoes sold out within 60 seconds. Religious or spiritual beliefs aside, so-called “sneaker heads” wanted a pair of rare 97s containing a drop of human blood in the sole.

While progressive critics praised MSCHF’s devilish design, Nike sued MSCHF for trademark infringement. Nike alleged confusion and deception surrounding the shoes’ source because MSCHF’s use of the iconic Nike swoosh implied authorization. Nike also alleged dilution by trademark tarnishment, as enraged customers boycotted original Nike products, hurting their pockets and long-held goodwill with consumers.

Nike obtained a permanent injunction order restricting MSCHF’s production, promotion, and sale of ‘Satan Shoes’. Nike also ordered all attorney fees and profits collected from shoe sales, reaping all the benefits of MSCHF’s creative, albeit mischievous work.

Unsurprisingly, Nike didn’t react with the same disapproval toward MSCHF’s ‘Jesus Shoes’ which had dropped earlier. Celebrities as well-known as Drake sported them. This seems to be due to Christian imagery not holding the stigma that Satanist imagery does today. Nike seems to sue for trademark infringement subject to society’s tolerance of alternative views, and MSCHF exists to push our boundaries.

The post A Brief Recent History of Nike’s Trademark Battles appeared first on IPOsgoode.

Eloise Somera is a 3L JD Candidate at Osgoode Hall Law School.

��

Alessia Monastero is an Associate Lawyer at Bhole IP Law and a Deputy Editor for the IPilogue.

��

On April 19, 2021, Canada’s Minister of Finance Chrystia Freeland . In a recent interview with Elle AyoubZadeh – the founder of , – we talked about all things fashion, trademarks, and women empowerment.

Elle always knew she was a purpose-driven person. While she started her career at a global investment management firm on Bay Street, Elle left her corporate lifestyle to start what would be her first entrepreneurial venture, a concept store that combined luxury retail products with wine and skin care. In all of her roles, one thing that stood out to Elle (and likely, to a number of women), was the unreasonable and unattainable standards set by the fashion industry. As a result, Elle married her passion to redefine the story of women with her passion for well-crafted products, especially shoes, to create the Zvelle brand. Thus, the phrase “Walk How You Want”, , was born.

What goes into a brand name? Elle told us that she wanted something unique and distinctive. Luckily for her, Zvelle fit these criteria. “This brand was bigger than me and so, I did not want to just use my name”. Elle knew that if she was to build a company as successful as Zvelle is today, she had to consider certain brand elements early on in her business. When considering brand names, she and her lawyer came across an existing retailer which could have potentially caused confusion between the two companies. When they came across this roadblock, Elle was at the stage of her business where rethinking her brand name was a viable alternative. This challenge ultimately led to the creation of the Zvelle brand.

Elle noted, however, that when it comes to intellectual property protection, the fashion industry can be a difficult space. “It is rare to be the first creator of a piece and its design. Fashion brands get their inspiration from one another, whether they are aware of it or not.”

As a result, Elle focuses on ensuring that each of her handbags and pairs of shoes has the “Zvelle touch”, consisting of high-quality materials and impeccable crafting. By ensuring that each Zvelle product is special and unique to the brand, Elle is confident that competitors will always have difficulty copying her designs and convincing consumers of authenticity.

Photo Credits: .

During our chat, Elle left us with three valuable lessons.

First, Elle’s journey to create Zvelle consisted of many life-changing moves. Elle reminded us that where you start is not necessarily where you will end up. To all the new and experienced lawyers alike, this is a great reminder to continue learning and exploring our interests in the legal field.

Second, to those interested in entering the fashion industry and starting a brand, Elle emphasizes the importance of being realistic and coming up with a feasible legal plan. Like Elle’s approach with Zvelle, it is important for entrepreneurs to prioritize their brand’s survival and reputation while planning a realistic intellectual property strategy. To Elle, a brand is not just what you wear, or the physical products created. What others say about your company is often one of the most influential aspects of building a reputable brand. The Zvelle brand, for example, empowers women and encourages women to move through the world in their own way.

Finally, Elle encourages intellectual property law students and lawyers to not only be experts in their field to assist clients, but to also develop an entrepreneurial mindset to better understand a client’s business model.

After speaking to Elle and learning about her business, we can confidently say that the Zvelle brand fully encompasses and encourages consumers to walk how they want. With a brand so aligned to its fundamental values, it is no wonder that Elle continues to grow and build out the Zvelle community far beyond the world of shoes.

The post Learning to Walk How You Want with Elle AyoubZadeh appeared first on IPOsgoode.

��

This article was����on��.

Written by Alessia Monastero, IPilogue editor and articling student at Deeth Williams Wall LLP.

The post Battle of the Brands: Top Ten Intellectual Property Fashion Lawsuits of the Decade appeared first on IPOsgoode.

Abloh has been using quotation marks around everything he associates with the Off-White brand. Whether it is a design feature on a��, a name, or just different objects on his Instagram account, the quotation marks have become his new go-to, and his devoted fans are noticing the trend. As such, the question becomes: can Abloh’s use of quotation marks be protected through trademark law given its use for commercial purposes?

According to Section 2(d) of the��Trademark Act, 15 U.S.C. §1052(d), trademark law is based on��whether or not there is a “” between the proposed trade-mark and another mark already registered or in a prior pending trade-mark application owned by someone else. The ��(“determines that a likelihood of confusion exists when both (1) the marks are similar, and (2) the goods and/or services of the parties are related such that consumers would mistakenly believe they come from the same source.”

The��USPTO has a public database on which anyone can search marks that are either registered or pending registration. Unfortunately for Abloh, quotation marks have been used as a signifier in the past by other brands, based on a search of USPTO.

However, for Abloh, it seems the use of quotation marks is a way to make the Off-White brand more distinguished for the time being, as opposed to securing a long-term intellectual property right. This means that he may not even be concerned about legally protecting his mark and going through the USPTO.

In a recent , Abloh explained, “You can use typography and wording to completely change the perception of a thing without changing anything about it. If I take a men’s sweatshirt and write “‘woman’ on its back, that’s art.” In fact, his recent “FOR WALKING” boots for women, pictured below, have become increasingly popular and are usually out of stock, perhaps in part owing to his creative use of typography.

Though at first glance it may seem odd for a brand, or anyone for that matter, to seek to claim rights to the use of quotation marks, this may not be completely shocking. In fact, according to , Off-White’s general logo consists of diagonal stripes, pictured below, which are often seen on crosswalks and street signs. Nevertheless, the Off-White legal team for federal trademark registration, which is still pending.

It is not difficult to make sense of this. Trade-mark law the use of words, names, symbols, or any combination thereof, used for commercial gain as a means of brand identity. Furthermore, as noted above the only limitation on receiving this protection is whether there is a “likelihood of confusion.”

As such, originality is not a trademark requirement, so the fact that the use of quotation marks or diagonal stripes are ubiquitous is not fatal for Abloh’s brand. Furthermore, since Off-White is increasingly becoming popular, consumers are more likely to associate these designs with Abloh, and Off-White as a result. Therefore, the “likelihood of confusion” element mentioned above should not be a difficult hurdle for Abloh, either.

Finally, US trademark law on a first-to-use basis, as opposed to a first-to-file one. This means that a registration with the USPTO is not necessary—though it is beneficial—to gain common law protection of the design. The use of the mark for commercial gain, which is what Abloh has been doing for the past several months, is, indeed, what he should be doing.

Nevertheless, it will be interesting to see whether Abloh actually pursues legal protection.

Saba Samanian is an IPilogue Editor�� and a JD Candidate at Osgoode Hall Law School.

The post Virgil Abloh’s “Trademark” appeared first on IPOsgoode.

In order for the turnover of styles and inventory to be profitable for fast-fashion retailers, costs must be cut somewhere. As such, intellectual property (IP) law and labour law issues have become increasingly ubiquitous for fast fashion brands and have drawn condemnation in the court of public opinion. For example, fast-fashion retailers, such as H&M, are increasingly facing scrutiny with respect to their .

Furthermore, international fast fashion retailer, , is no stranger to IP law disputes.

This time, Zara has set its sights on the innovative and contemporary clothing brand ACRONYM and has debatably copied its famous “functional strap” outerwear. Is it fair for Zara to copy a design that costs ACRONYM a significant amount of time and to produce?

As noted by the Toronto-based style law blog , which was co-founded by myself and IPilogue colleague Alessia Monastero, Zara’s repeat offences do not go unnoticed. In fact, two of Zara’s most notable IP disputes involve ACRONYM and .

In this case, ACRONYM founder, , has been selling its impeccably made coats for over 10 years. In fact, it has become known for its high-quality garments that are made to last. These designs feature a “functional strap” on the insides of the coats and contain a label that reads: “Interior crossbody strap allows wearer to carry over their shoulder.”

: ACRONYM, : Zara's Imitation Label

Aside from its creative designs, ACRONYM also uses a unique advertising plan, which markets the brand almost exclusively to fashion enthusiasts. For example, unlike mainstream brands, such as Chanel and Louis Vuitton, ACRONYM does not advertise on television, does not heavily seek out celebrities as ambassadors, nor aggressively use social media for promotion and marketing. Nevertheless, many have slowly started to become aware of the label due to Hugh’s partnerships with Stone Island and Nike.

The aim of copyright law, generally, is the protection of copyright owners to disallow others to copy one’s work without permission. The promise of this protection promotes creativity and the orderly exchange of ideas. However, it seems as though Zara does not entirely care about such protective mechanisms, since it is to copyright infringement. Perhaps, the revenues from selling copied designs en-mass offsets their litigation costs, though this is just speculation.

ACRONYM is protected by its , which was filed and published in 2003. Under this , ACRONYM “has the right to prevent third parties from making, selling or importing articles bearing or embodying a design which is a copy, or substantially a copy, of the protected design, when such acts are undertaken for commercial purposes.” Zara’s functional strap certainly meets all of these criteria.

The United States Court of Appeals in , stated, “[I]f, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.”

Since the primary difference between the ACRONYM and Zara products is the quality of the material, an “ordinary observer” can very easily mistake the two labels since a reasonable shopper normally does not spend a lot of time examining the nuances of product quality. In essence, the products appear “substantially the same”.

Zara’s defence relies on a “sufficient distinction” between the two products. However, as seen in , the threshold for this is quite high. What constitutes as “sufficiently distinct” is often an additional part to the product or a substantial difference in the overall look. Given that Zara’s imitation does not, in fact, make a significant change to the original ACRONYM design, it is unlikely that a court will view it as being “sufficiency distinct”. Even if the court does find a distinction, it may decide to look at the prior art to ensure that no confusion will take place with respect to the product.

It nevertheless seems unfair that Zara is able to provide its consumers with a product that looks very similar to one that is being sold for almost 6 times its price point. However, since the onus remains on the party alleging the infringement to bring the issue forward, some labels may think that the cost of litigation –both time and effort– does not present a valuable trade-off.

Take ACRONYM, for example, with designs that are incredibly well made. While ACRONYM takes a detail-oriented approach to the quality, style, and longevity of their products, Zara’s research mostly consists of the latest trends and looking at the designs of other labels. As such, Hugh is not bothered by the copycats that have set their sights on the label, especially the fast fashion retailers that focus solely on style and very little, if at all, on quality. This is because Hugh does not feel as though he is losing the customers who prefer to purchase Zara’s cheaper imitation for the look as opposed to the quality. In fact, when asked his opinion on Zara’s imitation of the signature jacket, Hugh reportedly�� with a simple: “LOL.”

Well played.

Saba Samanian is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

The post Zara: the Repeat Offender appeared first on IPOsgoode.