Walker Wear LLC v. Off-White LLC, 624 F.Supp.3d 424

Plaintiff Walker Wear LLC (founder April Walker) alleges Defendants Off-White and Saks sold an Off-White “Diagonal Stripe Varsity Bomber Jacket” that used Walker Wear’s distinctive WW XXL word and design marks.
Walker Wear alleges long-standing use of the marks, celebrity/film exposure, media coverage, and that certain consumers and a friend believed the Off-White jacket was a Walker Wear product.
Plaintiff filed a complaint asserting federal dilution (Lanham Act § 1125(c)), federal/unfair competition and state-law trademark claims, and GBL § 349 and § 360 claims; Farfetch was later dismissed by settlement.
Defendants moved under Rule 12(b)(6) to dismiss the Dilution Claim and the GBL § 349 claim.
The court held that Walker Wear failed to plausibly allege the marks are “famous” under the TDRA and failed to allege a public-oriented injury distinct from ordinary trademark harm, and therefore granted dismissal of both claims.

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether Walker Wear plausibly alleged its marks are "famous" under the TDRA (15 U.S.C. §1125(c))	Marks are famous based on decades-long media coverage, celebrity use, "best-selling" items, and consumer confusion evidence	Marks are not household names; Plaintiff conflates brand/designer fame with fame of the specific marks and pleads only conclusory facts, failing statutory fame factors	Dismissed: Plaintiff did not plausibly allege fame; statutory factors (advertising reach, sales, actual recognition, federal registration) do not support fame
Whether GBL § 349 was pleaded (consumer-oriented, materially misleading practice causing public injury)	Defendants’ use caused consumer confusion and injury to New York consumers and public interest	Trademark-type harm and ordinary consumer confusion do not satisfy § 349 unless there is a distinct, substantial public injury beyond trademark infringement	Dismissed: Alleged consumer confusion is the same harm trademark law addresses and is insufficient to show the required public-oriented injury

Ashcroft v. Iqbal, 556 U.S. 662 (U.S. 2009) (pleading must state a plausible claim)
Bell Atl. Corp. v. Twombly, 550 U.S. 544 (U.S. 2007) (pleading requires more than labels and conclusions)
ATSI Commc’ns, Inc. v. Shaar Fund, Ltd., 493 F.3d 87 (2d Cir. 2007) (courts may consider documents integral to the complaint on a Rule 12(b)(6) motion)
Sara Designs, Inc. v. A Classic Time Watch Co. Inc., 234 F. Supp. 3d 548 (S.D.N.Y. 2017) (pleading and inference standards on motion to dismiss)
Savin Corp. v. Savin Grp., 391 F.3d 439 (2d Cir. 2004) (fame requirement narrows dilution claims)
Schutte Bagclosures Inc. v. Kwik Lok Corp., 193 F. Supp. 3d 245 (S.D.N.Y. 2016) (only household-name marks qualify for TDRA protection)
Luv N’ Care, Ltd. v. Regent Baby Prods. Corp., 841 F. Supp. 2d 753 (S.D.N.Y. 2012) (TDRA rejects niche or trade-channel fame)
Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628 (9th Cir. 2008) (example of a mark found sufficiently famous for dilution)
Bd. of Regents of Univ. of Tex. Sys. v. KST Elec., 550 F. Supp. 2d 657 (W.D. Tex. 2008) (extensive media exposure alone insufficient for fame)
New York City Triathlon, LLC v. NYC Triathlon Club, Inc., 704 F. Supp. 2d 305 (S.D.N.Y. 2010) (elements required for TDRA dilution claim)
Spagnola v. Chubb Corp., 574 F.3d 64 (2d Cir. 2009) (elements required to plead GBL § 349 claim)
Chanel, Inc. v. RealReal, Inc., 449 F. Supp. 3d 422 (S.D.N.Y. 2020) (trademark harm alone does not satisfy § 349 public-harm requirement)