"Confidential" Settlement: Lawsuit between Off-White and Brooklyn Light House comes to an end

01 May 2019

May 1, 2019:

A case on Trademark infringement was filed in last year against Brooklyn Light House by Off -White. In last month the two parties went to a confidential settlement. Brooklyn Light House agreed to cease all sales of Off-White Trademark goods.

Brooklyn Light House used plaintiff’s parallel diagonal lines and two intersecting dual sided arrow designs. They used the words “Off-White” on their products without any permission and authority. Off-White filed seven causes of actions Brooklyn Light House before the United States District Court, Southern District of New York. The actions involved counterfeiting, infringement, passing off, unlawful practices and unjust enrichment.

15 U.S. Code 1117 says on the recovery of violation of rights. A violation under Section 1125 (a) or (d) of the chapter Trademark shall have been established in any civil action. The plaintiff shall be entitled, subject to the provisions of sections 1111 and 1114 and subject to the principles of equity, to recover profits of the defendants, any damages sustained by the plaintiff and the costs of the action.

Plaintiff is a company existing under the laws of the State of Illinois. Defendant Brooklyn Threads LLC d/b/a Brooklyn Light House exists under the laws of the State of New York. The Off-White products are marketed under the Trademark Off-White and Off-White c/o Virgil Abloh, (Off-White Brand). The counterfeit products of the Defendant are indistinguishable and no ordinary people could understand the differences.

On September 13, 2018 counsel of plaintiffs send cease and desist letter to defendants. Defendant denied all allegations through a letter dated 20th September 2018. Plaintiffs alleged that Defendants never complied with the demands of plaintiffs and therefore the plaintiffs proceed with the infringement case

Off-White claimed damages under Section 35 of the Lanham Act for Trademark infringement. Off-White also claimed to destroy all the products bearing Off-White designs. They prayed for an order from the Court to provide all the account of profits of the deceptively similar products.

At last, there was a confidential settlement between the parties. The Defendants had agreed to cease all sales of Off-White Trademark-bearing goods and will pay its own costs in connection with the suit.

The fashion industry has become a hub of Trademark infringement cases. This case was a clear case of counterfeit Trademark. Judge Valerie E. Caproni terminated the case as there was voluntary dismissal of all claims by the plaintiff.