Walmart have decided to have another go at the YEEZY brand for the alleged similarities in both brand’s logos. This has been going on for since at least April 2020 but just recently Walmart has filed a new opposition against YEEZY with the U.S. Patent and Trademark Office. There’s a lot to get into so let’s try and sum it up.
Alright where to start? Let’s just get this out of way and say that most of this information comes from The Fashion Law where if you want further information you should visit. So let’s go…
Well from the outset, in January 2020, YEEZY applied for a trademark of their logo for use on everything including clothing, retail stores, and construction. Walmart didn’t like that as they saw the YEEZY logo as “confusingly similar” to their own. So in April 2020, Walmart lodged a notice of opposition with the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB).
Walmart claimed that “it will be damaged by registration of [Yeezy LLC’s] mark,” since it is a lookalike with “a design of six rays symmetrically centered around a circle.”
On September 3, an Interlocutory Attorney for the TTAB shot down one of Walmart’s claims in Arkansas as the attorney found that Walmart’s Deception/False Designation of Origin was insufficient to stop the YEEZY logo.
According to TTAB Interlocutory Attorney Mary Catherine Faint, Walmart have to be able to assert that “the applicant’s mark falsely suggests a connection with the opposer’s persona, points uniquely to the opposer, and is of sufficient fame that a connection with the opposer would be presumed.”
Walmart haven’t succeeded because, according to Faint, there is “a distinction between a term being perceived as a company’s trademark and [the mark] being a company’s persona,” and importantly, Walmart doesn’t establish that its own “Spark Design” logo is its “identity or persona.”
With that failure, Walmart have amended their opposition petition on September 23. The company replaced the Deception/False Designation of Origin claim with a claim of False Suggestion of a Connection under Trademark Act § 2(a). They allege that the “Spark Design” logo “is, and since its introduction in 2007 has been, widely and heavily used to identify [Walmart].”
Walmart state that they use this logo everywhere and due to this widespread use, Walmart’s lawyers say that the mark “has become synonymous” with Walmart and as a result, “[C]onsumers and others are highly likely to recognize that the Walmart mark points uniquely and unmistakably to [Walmart].”
Walmart claims that YEEZY’s logo is “a close approximation of [Walmart’s] logo, which had been in wide use long prior to [Yeezy’s] filing date,” as both parties’ “designs incorporate lines of equal length radiating out from the center to resemble a spark or sunburst.” Walmart says that a connection between YEEZY and Walmart “would be presumed” when no connection exists.
YEEZY have denied all of this and their main argument in defence is that Walmart “inexplicably relies upon two cancelled trademark registrations” – including one that Walmart claims is “incontestable and provide[s] prima facie and conclusive evidence of [its] ownership and exclusive rights to use [the Spark Design] mark in commerce” – and “one abandoned trademark application as the basis for its claims,” which it cannot use as the basis for its action.
The case will really come down to determining whether or not consumers will actually be confused by the two logos. It can really go either way because you can see some similarities but is it really similar enough? Time will tell.