After nearly four years of battle with the U.S. Patent and Trademark Office (USPTO), high-end fashion company Off-White secured a trademark registration for its signature red zip tie in connection with footwear, with color claimed as a feature of the mark. Off-White, which became a well-recognized streetwear brand under the direction of American fashion designer Virgil Abloh, began affixing the zip tie to its products in May 2016 and filed to obtain trademark rights in July 2018.
The USPTO Examining Attorney assigned to the application issued four Office Actions over the years, each time refusing Off-White’s attempt to trademark the zip tie for a slew of reasons. Off-White ultimately overcame these rejections, in large part by submitting arguments and evidence that the zip tie is non-functional and communicates to consumers that the shoe is an Off-White product. For example, the fashion company submitted that “[c]elebrities and other consumers do not wear shoes with Applicant’s Mark attached because of how Applicant’s Mark looks, but because of the message it conveys to others: this is a product produced by Applicant.”