OffWhite Productions LLC v. Off---White LLC

Background

OffWhite Productions, LLC, doing business as OffWhite Co., sued Off-White, LLC. OffWhite alleged that it owned the registered word mark OFFWHITE CO. and used it for marketing, product design, and related services. Its claims were trademark infringement under 15 U.S.C. § 1114(1), false designation of origin and false description under 15 U.S.C. § 1125(a)(1)(A), and common-law unfair competition under New York law. OffWhite voluntarily dismissed a separate claim for unfair competition under federal law in its opposition to the motion.

OffWhite alleged that Off-White, an American division of a Milan-based fashion house, used the Off-White brand for apparel, accessories, and an expanding range of consumer goods. OffWhite claimed that consumers might confuse Off-White’s products with OffWhite’s services and products, including a set of children’s construction tools and other alleged OFFWHITE-branded goods. It also alleged that Off-White’s online activity displaced OffWhite’s website in search results and increased use of the terms “OffWhite” and “OFFWHITE” on social media.

Motion and Legal Standard

Off-White moved under Federal Rule of Civil Procedure 12(b)(6), which allows dismissal when a complaint does not state a legally sufficient claim. At this stage, the court accepted well-pleaded factual allegations as true but did not accept legal conclusions presented as facts. The complaint had to allege enough concrete facts to make the requested relief plausible.

The court explained that both federal trademark claims required OffWhite to allege that its mark was protectable and that Off-White’s use was likely to confuse consumers about the source or sponsorship of the goods. New York common-law unfair competition required the same likelihood of confusion, plus bad faith. The court applied the eight-factor test commonly used in the Second Circuit to evaluate trademark confusion, while emphasizing that the ultimate question was whether consumers were probably likely to be confused, not merely possibly confused.

Court’s Analysis

The court rejected OffWhite’s first theory, which was that consumers would think the fashion company Off-White was the same business as OffWhite, the marketing and branding consultancy. The complaint described the companies as operating in different market spaces and serving different consumers with different products or services. The court held that the complaint offered only conclusory statements and no supporting facts for this theory.

The court found that OffWhite’s second theory—confusion between Off-White’s apparel and accessories and OffWhite’s branded consumer products—had greater potential but still failed. The amended complaint provided few details about OffWhite’s consumer products, describing only a set of children’s construction tools and referring generally to housewares and toys. It did not provide facts showing why consumers would confuse those products with Off-White’s yellow industrial belt, which Off-White marketed as a fashion accessory. The complaint also alleged no specific instance of actual consumer confusion.

The court further held that the statement that consumers were likely to confuse the companies’ goods and that OffWhite’s trademark might eventually become extinct was a legal conclusion, not a factual allegation. Because likelihood of confusion was necessary for all three remaining claims, the failure to plead that element required dismissal of the federal trademark claims and the New York unfair-competition claim. The court did not need to resolve whether it could review OffWhite’s website because the complaint independently failed to plead likely consumer confusion.

Disposition

Judge Engelmayer granted Off-White’s motion to dismiss the amended complaint in its entirety. Because OffWhite had already amended its complaint, the court stated that the dismissal was with prejudice in this litigation. The court clarified that the dismissal did not prevent OffWhite from bringing a separate lawsuit based on products outside the scope of the amended complaint or events occurring after it. The court directed the clerk to terminate the pending motions and close the case.