Trademark Infringement and Dilution of the ‘WW XXL ATHLETIC WALKER WEAR’ mark

Introduction

Recently, Walker Wear, a hip-hop fashion pioneer owned by April Walker, filed a lawsuit for trademark infringement, unfair competition, and unfair business practices against Off-White LLC and others in the New York District Court.

Facts of the case

Walker Wear is a female-owned brand for almost 30 years. The hip-hop stars usually wore the clothing. April Walker, the owner of the Walker Wear brand, filed a suit against Virgil Abloh’s imprint. According to the lawsuit, the defendant Virgil Abloh’s brand Off-White has allegedly used a print on its jackets indicating the ‘WW XXL Athletic mark’[1], which the plaintiff used in her Jacket design.

The plaintiff uses the same mark of ‘WW’ with centered and slightly overlapping and the tip of the two W’s extended with silver color on dark blue and black background. The plaintiff has owned the ‘WW’ mark with trademark registration. Walker Wear filed a trademark application for registration for a mark consisting of ‘stylized letters WW and the stylized letters XXL’ and the wording ‘ATHLETIC WALKER WEAR’ in upper case letters with the U.S. Patent and Trademark Office in March for use on jackets, athletic shirts, sweatshirts, and t-shirts. 

According to the plaintiff suit, the defendant used ‘cheat code,’ meaning changing other’s designs with only 3%, and then claims the design as his own and using it for his purposes. April Walker learned that Saks fifth avenue and farfetch.com are selling the defendant’s product on their website. Even after asking them to stop, they were still selling them and gaining profit from them.

April Walker said that the jackets with the ‘WW’ mark are similar to her design, and the defendant is using it without the permission of April Walker or Walker Wear brand. She also stated that Off-White is fully aware of her design and is deliberately using it for its benefit. The plaintiff argues that the similarity of the marks – particularly given that ‘WW’ appears to have no particular significance for a brand called ‘Off-White’ – further suggests the defendants’ bad faith in using the mark.

To prevent the defendants from making unauthorized use of the WW mark, the plaintiff even sent a cease-and-desist notice to them in June, to which the defendants flatly refused to cease the infringing activities.

Plaintiff’s trademark

The trademark in question has been in first use on 1st August 1993. The mark has been commercially used first on 15th May 1994. This mark is associated with Walker Wear for a long time, and the plaintiff has invested a lot of time and effort in building this brand.  April Walker, through this mark, has got a lot of fame, goodwill, and substantial recognition. The Walker Wear brand and the ‘WW’ mark have acquired media coverage and an international platform. April Walker has the intellectual property right on her ‘WW’ mark specifically.

Also read: UF Conor McGregor C star, Conor McGregor loses trademark fight with clothing firm

Prayers

The plaintiff has prayed for an entry of judgement for Walker Wear on each of its claims. The defendant is gaining unauthorized benefit by using the plaintiff’s design and it is also causing a lot of confusion among the consumers. Further, the plaintiff has prayed for an order and judgement to preliminarily and permanently restrain the defendants and their agents from other infringement and dilution of their mark.

Walker Wear also sets out claims of trademark Infringement and dilution, unfair competition, and unjust enrichment, and contends that Off-White has also violated N.Y. Gen. Bus. Law § 349, which prohibits deceptive and misleading business practices, and is seeking monetary and statutory damages.

The court final order is still awaited.

[1] USPTO, Serial No. 90592001
[2] https://www.thefashionlaw.com/off-white-named-in-new-suit-for-allegedly-infringing-walker-wears-ww-trademark/ 

Author: Sweksha Beniwal, student at Vivekananda Institute of Professional Studies

Disclaimer: This brief is intended to provide general guidance to the subject matter. It does not contain legal advice. For any specific advice/corrections, write to [email protected]

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