Case 8:20-cv-02121 Document 1 Filed 11/03/20 Page 1 of 24 Page ID #:1 1 EPSTEIN DRANGEL LLP Peter J. Farnese (SBN 251204) 2 [email protected] 11601 Wilshire Blvd., Suite 500 3 Los Angeles, California 90025 Telephone: 310-356-4668 4 Facsimile: 310-388-1232 5 Jason M. Drangel [email protected] 6 William C. Wright [email protected] 7 Ashly E. Sands [email protected] 8 Kerry B. Brownlee [email protected] 9 60 East 42nd Street, Suite 2520 New York, NY 10165 10 Telephone: 212-292-5390 Facsimile: 212-292-5391 11 Pro Hac Vice Applications Forthcoming 12 BELLIZIO + IGEL 13 Brian Igel [email protected] 14 One Grand Central Place 305 Madison Avenue, 40th Floor 15 New York, New York 10165 Tel.: 212-873-0250 16 Fax: 646-395-1585 Pro Hac Vice Application Forthcoming 17 Attorneys for Plaintiff Off-White LLC 18 19 UNITED STATES DISTRICT COURT 20 FOR THE CENTRAL DISTRICT OF CALIFORNIA - SOUTHERN DIVISION 21 OFF-WHITE LLC, CASE NO. 8:20-cv-2121 22 Plaintiff COMPLAINT FOR: 23 v. TRADEMARK INFRINGEMENT / 24 UNFAIR COMPETITION 25 AFTERS ICE CREAM, INC., 26 Defendant. 27 JURY TRIAL DEMANDED 28 COMPLAINT Case 8:20-cv-02121 Document 1 Filed 11/03/20 Page 2 of 24 Page ID #:2 1 Plaintiff Off-White LLC (“Off-White” or “Plaintiff”), a limited liability company 2 organized and existing under the laws of the State of Illinois, by and through its 3 undersigned counsel, alleges as follows: 4 NATURE OF THE ACTION 5 1. This case involves claims for trademark infringement of Plaintiff’s 6 federally registered trademarks in violation of § 32 of the Lanham Act, 15 U.S.C. § 7 1114; unfair competition in violation of Section 43(a) of the Trademark Act of 1946, as 8 amended (15 U.S.C. § 1125(a)); and related state and common law claims, arising from 9 Defendant Afters Ice Cream, Inc.’s (“Afters” or “Defendant”) infringement of Plaintiff’s 10 Off-White Marks (as defined infra), including, without limitation, by manufacturing, 11 advertising, marketing, promoting, distributing, displaying, offering for sale, and/or 12 selling products that infringe one or more of the Off-White Marks (as defined infra) 13 (collectively, the “Infringing Products”), and using one or more of the Off-White Marks, 14 or marks that are confusingly similar thereto (collectively, the “Infringing Marks”), in 15 connection with Defendant’s business and the advertisement and marketing thereof, 16 including on retail fixtures, signage, interior décor, a branded vehicle, and other 17 promotional materials. 18 JURISDICTION AND VENUE 19 2. This Court has federal subject matter jurisdiction, pursuant to 28 U.S.C. 20 §§ 1331 and 1338(a) and (b), and 15 U.S.C. § 1121, because this is a trademark action 21 that arises under the laws of the United States. This Court has supplemental jurisdiction 22 pursuant to 28 U.S.C. § 1367(a). 23 3. This Court has general and/or specific personal jurisdiction over 24 Defendant because, upon information and belief, Defendant is a California corporation, 25 with its principal place of business in this judicial district, and conducts business, on a 26 continuous and systematic basis, throughout the State of California and in this judicial 27 district, and/or otherwise avails itself of the privileges and protections of the laws of the 28 -1- COMPLAINT Case 8:20-cv-02121 Document 1 Filed 11/03/20 Page 3 of 24 Page ID #:3 1 State of California, such that this Court’s assertion of jurisdiction over Defendant does 2 not offend traditional notions of fair play and due process. 3 4. Venue for this action is proper in the United States District Court for the 4 Central District of California, inter alia, pursuant to 28 U.S.C. § 1391 because, upon 5 information and belief, Defendant resides in this judicial district and/or a substantial part 6 of the events or omissions giving rise to the asserted counts occurred in this judicial 7 district, and harm to Plaintiff has occurred in this district. Alternatively, as noted supra, 8 this Court has personal jurisdiction over Defendant. 9 THE PARTIES 10 5. Off-White is a limited liability company, organized and existing under the 11 laws of the State of Illinois, with an address of 360 Hamilton Avenue, #100, White 12 Plains, New York 10601. 13 6. Upon information and belief, Defendant is a California corporation, with 14 its principal place of business at 1632 E Wilshire Avenue, Santa Ana, California 92705 15 (according to the records on file with the California Secretary of State), a self- 16 proclaimed headquarters at 16130 Gothard Street, Huntington Beach, California 92647, 17 and at least twenty-seven (27) operating locations throughout the State of California 18 (i.e., in Alhambra, Azusa, Cerritos, Chino Hills, Costa Mesa, Fountain Valley, 19 Fullerton, Highland Park, Los Angeles, two (2) in Irvine, Long Beach, Orange, Oxnard, 20 San Diego, Pasadena, Riverside, Ranch Cucamonga, Rowland Heights, Sherman Oaks, 21 San Bernardino, Temecula, Tustin, Upland, Venice, West Covina, and Woodland 22 Hills).1 23 24 1 On Defendant’s website, available at www.aftersicecream.com (“Defendant’s 25 Website”), twenty-seven (27) locations are listed, with two (2) additional locations 26 listed as “coming soon” in Newport Beach and Westcliff Plaza. On Defendant’s Instagram handle, @aftersicecream, Defendant advertised a grand opening of the 27 Newport Beach location on September 19, 2020; therefore, Defendant likely now has twenty-eight (28) current locations. 28 -2- COMPLAINT Case 8:20-cv-02121 Document 1 Filed 11/03/20 Page 4 of 24 Page ID #:4 1 GENERAL ALLEGATIONS 2 Off-White and the Off-White Marks 3 7. Off-White is the owner of a young, successful, and high-end line of 4 men’s and women’s apparel, as well as accessories, jewelry, furniture and other ready 5 made goods (collectively, “Off-White Product(s)”), marketed under the trademarks Off- 6 White™ and Off-White c/o Virgil Abloh™ (“Off-White Brand”), launched in or about 7 2013, all of which are manufactured in Milan and distributed through various channels 8 of trade in the United States and abroad. 9 8. More specifically, the Off-White Products are sold at top-tier and/or 10 luxury retailers such as Barneys New York, Selfridges, Bergdorf Goodman and Saks 11 Fifth Avenue, as well as Off-White’s boutiques located in prominent fashion epicenters 12 such as London, Tokyo, Hong Kong, Seoul, Beijing, Shanghai, Toronto, Singapore and 13 New York City. 14 9. The success of Off-White, the Off-White Brand, and the Off-White 15 Products is largely attributable to Virgil Abloh (“Abloh”), the founder of Off-White, 16 who is, among other things, an artist, architect and designer. Abloh is well known due 17 to his work with Kanye West over the years, as well as his role as the Artistic Director 18 of Menswear at Louis Vuitton. 19 10. Abloh has been nominated for, and has won, a number of prestigious 20 awards and accolades. For example, Abloh was named one of TIME’s 100 Most 21 Influential People in 2018, won the Urban Luxe Brand Award at The Fashion Awards in 22 2017 and 2018, and won the International Designer of the Year Award at the GQ Men 23 of the Year Awards in 2017. 24 11. Abloh has presented his work at major design schools throughout the 25 United States, such as the Harvard Graduate School of Design and Columbia Graduate 26 School of Architecture. 27 28 -3- COMPLAINT Case 8:20-cv-02121 Document 1 Filed 11/03/20 Page 5 of 24 Page ID #:5 1 12. Additionally, Abloh has exhibited his work at various shows and 2 institutions throughout the world. For example, in 2019, Abloh has an exhibition of his 3 past and current work at the Museum of Contemporary Art of Chicago, Illinois. 4 13. Abloh sought out to, and did indeed create a cutting-edge brand (i.e., the 5 Off-White Brand) that is rooted in current culture, and geared towards youthful 6 consumers. 7 14. Since the launch of the Off-White Brand and the Off-White Products 8 approximately seven (7) years ago, the Off-White Brand and Off-White Products, as 9 well as Abloh and Off-White, have been featured in numerous press publications, 10 including, but not limited to, New York Magazine, GQ, W Magazine, and Vogue, among 11 others. 12 15. The Off-White Brand has been recognized for its distinctive graphic and 13 logo-heavy apparel designs, including, a unique design mark comprised of alternating 14 parallel diagonal lines, which has been used on or in connection with Off-White Products 15 since at least as early as 2013. True and correct photographs of a hang tag, interior 16 labels, and Off-White Products featuring the Off-White Diagonal Marks are depicted 17 below: 18 19 20 21 22 23 24 25 26 27 28 -4- COMPLAINT Case 8:20-cv-02121 Document 1 Filed 11/03/20 Page 6 of 24 Page ID #:6 1 16. Off-White has gained significant common law trademark and other rights 2 in its Off-White Marks (as defined infra) and Off-White Products through its use, 3 advertising and promotion of the same. 4 17. Off-White has also protected its valuable rights by filing for and obtaining 5 a number of federal trademark registrations. For example, Off-White has protected its 6 valuable rights by filing for and obtaining federal trademark registrations with the United 7 States Patent and Trademark Office (“USPTO”), including, but not limited to, the 8 following U.S.