Off-White is still battling to register the ‘For Walking’ trademark
The United States Patent and Trademark Office (“USPTO”) has withdrawn a pending trademark application filed by Off-White from the publication, determining that the mark – “For walking” for use on the shoes – does not “operate as a mark”. After first publishing the opposition mark last month, a USPTO examining attorney said in a newly released statement Office action that “upon further examination” the mark cannot proceed through the registration process, as it is “a slogan or term that would be perceived by consumers” not as an indicator of source but as “simply conveying information about [Off-White’s goods] or similar goods and/or services”, in the same way as “UNLIMITED TRANSPORT”, for example, “simply provides information about the services”.
In the Bureau’s non-final action sent to Off-White’s attorney on September 21, USPTO examiner Shaunia Carlyle denied Off-White’s registration for the trademark “For Walking” – quotes , included – for use on footwear, as it falls within the scope of “terms and phrases which merely convey an informational message”, which are not registrable.
Elaborating on his decision, Carlyle states that determining whether a term or phrase functions as a trademark depends on “how it would be perceived by the relevant public”. Citing precedent from the USPTO’s Trademark Trial and Appeal Board (“TTAB”), it states that “the more commonly a term or phrase is used, the less likely the public is to use it to identify a single source and the less it is likely to be recognized by buyers as a trademark. That poses a problem here, she says, pointing to “evidence from various websites found on the Internet” in which the term “For walking” is widely used to indicate that shoes have a particular purpose: they “can be used for walking”. (The evidence consists of screenshots of articles like Elle and Who What Wear that are mostly about comfortable heels “for walking.”)
“Because consumers are used to seeing [the “For Walking”)] slogan or term used in this way and would take the words in their ordinary sense as applied to [Off-White’s] goods and/or services,” Carlyle argues that “consumers are likely to perceive wording simply as information about goods.” (She makes no mention in this round of the importance – if any – of the inclusion of quotation marks on such consumer perception.)
In this context, Carlyle states that “For Walking” would “not be perceived as a brand that distinguishes [Off-White’s] property from those of others and identifies the source of [Off-White’s] of property.” As such, the USPTO removed “For Walking” from publication, saying that “an applicant cannot overcome this denial by modifying the Supplementary Register application or asserting a claim of acquired distinctiveness … nor by submitting a replacement specimen to overcome this refusal.”
So what can Off-White’s attorney do now, nearly two years after the “For Walking” petition was first filed?
It is not necessarily without recourse. Trademark attorney and former USPTO examining attorney Ed Timberlake says Off-White’s attorney can respond to this Bureau action by arguing that the mark does, in fact, work. Then, when the non-functioning denial is made final, “the brand can request a reconsideration, and also has the option of appealing to the TTAB, which seems to have shown some appetite for reversing the non-functioning denials.” Barely a surefire win, Timberlake says “it’s hard to imagine, on this record, the TTAB reversing in the name of the quotes.”
It should be noted, he says, that at the first stage of the Office Action, the position of examining counsel “had not yet hardened into operational failure.” (In its first Office action in January 2021, Carlyle challenged the mark on the grounds that it “merely describes a feature and purpose of the applicant’s wares,” and proposed registration on the Supplementary Register.) It is “possible – and somewhat tempting”, according to Timberlake, “to read the Office’s first action as an opportunity for Off-White to respond with evidence of acquired distinctiveness. (And Off-White’s attorney argued for active distinctiveness in response to subsequent Bureau action.)
However, this approach must be weighed against “the risk that the examining lawyer may actually go further, refusing registration on the basis of a failure to function as a mark,” he says. “If this happens, the requester will no longer have the option to modify the additional register.”
According to Timberlake, a “strategic decision” to accept the supplemental register, which protects non-distinctive marks that may acquire distinctiveness, would not have been a total loss for Off-White. “The R symbol in a circle looks exactly the same for the additional register as it does for the main register, so Off-White might have had some benefit from it (even if it didn’t come with all the legal benefits we associate in the main register).
The late brand Virgil Abloh’s latest denial follows previous series, in which the USPTO regularly challenged “For Walking”‘s ability to cite the source of Off-White shoes. Off-White’s attorney argued against such denials arguing that, among other things, the inclusion of quotation marks is significant, as the mark is “elevated beyond being descriptive [of the goods upon which it appears] due to the unique commercial impression created by [Off-White’s] separate use of quotation marks. The mark is different from “simply using the word or phrase without the quotes,” Off-White asserted, saying that due to the inclusion of the quotes, the mark acts as a “double meaning.”
Unconvinced by such claims, Carlyle said in a July 2021 Bureau action that in general, “adding punctuation marks to a descriptive term will generally not change the term to a non-descriptive term”, and more precisely, “here, with and without the quotation mark, the mark implies a characteristic of the goods – desirable and made FOR THE MARKET.
As for Off-White’s other quote-centric trademark, “Product Bag” — for use on “tops as clothes; bottoms as clothes,” after overcoming more than one non-final USPTO denial, the Trademark Office has issued a indemnity notice in December 2020 but Off-White has not yet filed a statement of use.