Walker Wear LLC v. Off-White LLC

Background

Walker Wear LLC sued Off-White LLC, Off-White Operating Soho LLC, Saks Fifth Avenue LLC, and Saks Incorporated. Walker Wear alleged that an Off-White “Diagonal Stripe Varsity Bomber Jacket,” sold through the Saks website and promoted by Off-White, used Walker Wear’s “WW XXL Athletic” word mark and related designs. Walker Wear asserted federal claims under the Lanham Act for unfair competition and dilution, state-law trademark infringement and unfair competition claims, and claims under New York General Business Law Sections 349 and 360.

The defendants moved under Federal Rule of Civil Procedure 12(b)(6), which allows dismissal when a complaint does not allege enough facts to state a legally sufficient claim. The motion challenged only Walker Wear’s federal dilution claim and its New York General Business Law Section 349 claim.

Federal Dilution Claim

The court held that Walker Wear had not plausibly alleged that its marks were “famous” under the federal Trademark Dilution Revision Act. That law requires a mark to be widely recognized by the general consuming public in the United States, rather than merely known within a particular industry, geographic area, or market segment.

Walker Wear alleged that its designs had appeared in films and media features, had been worn by well-known hip-hop performers, and were recognized by some consumers. The court concluded that these allegations did not show that the marks approached the level of broadly recognized household names. It also found that the complaint did not provide sufficient information about advertising spending, sales volume, geographic reach, or actual public recognition. The court noted that the allegations often concerned Walker Wear’s brand or April Walker’s career rather than recognition of the specific marks, and that Walker Wear had not alleged that the marks were federally registered.

Because Walker Wear had not sufficiently alleged fame, the court held that it failed to state a federal dilution claim. The court granted the defendants’ motion to dismiss the Dilution Claim.

New York General Business Law Section 349 Claim

Section 349 prohibits deceptive acts or practices in business, trade, or commerce in New York. A claim under that statute requires allegations that the conduct was directed at consumers, materially misleading, and caused injury.

The court explained that trademark-infringement allegations generally do not support a Section 349 claim unless they involve a specific and substantial injury to the public beyond the ordinary harm addressed by trademark law. Walker Wear relied on alleged consumer confusion and a general assertion that consumers and the public were injured. The court found those allegations insufficient because confusion and deception were the same type of harm as the alleged trademark infringement, and the complaint did not plausibly show that the primary injury was to the public rather than to Walker Wear.

The court therefore granted the defendants’ motion to dismiss the Section 349 Claim.

Disposition

Judge Laura Taylor Swain’s conclusion states that the defendants’ motion to dismiss Walker Wear’s Lanham Act dilution claim and General Business Law Section 349 claim was granted in its entirety. The order resolved docket entry number 70. The case remained referred to Magistrate Judge Stewart Aaron for general pretrial management.