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Trademark Tales: Yeezy Vs. Walmart Battle Continues

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Trademark Tales: Yeezy Vs. Walmart Battle Continues

 

The battle between Walmart and Kanye West and his Yeezy brand continues as Yeezy files suit against Walmart for trademark infringement for selling copycat foam runner shoes on its marketplace.

Yeezy trademark

By Julie Tolek

Yeezy, LLC and Kanye West have a history with Walmart in the world of intellectual property and trademark rights. Most recently, Yeezy sued Walmart and third-party sellers for unfair competition for selling copycats of Yeezy’s famed Foam Runner Shoes.

Kanye West and Yeezy allege “unjust enrichment based upon Walmart’s willfully trading off the renown of Kanye West and his iconic YEEZY brand” and that consumers are purchasing the look-alike shoes from Walmart with “the mistaken belief that the shoes are associated with West and the YEEZY brand.”[i]

The complaint, filed on June 24, 2021 alleges that “Walmart is flagrantly trading off of West’s and the YEEZY brand’s popularity by offering for sale an imitation version of the YEEZY FOAM RUNNER.” The complaint accuses Walmart of intentionally and successfully trading on the Yeezy brand’s reputation based on comments on Walmart’s website. For example, the comments include specific references to “Yeezy” and “Cause [sic] they yeezy” as well as the Walmart version being “budget” and “more affordable” than the genuine Yeezy shoe.

Yeezy and Kanye West argue that actual confusion among consumers exists based on comments on social media referencing “Walmart Yeezy’s” and the availability of “Foam Runners at Walmart,” and that consumers are already associating the Walmart look-alikes with Kanye West and Yeezy even though the companies have no relationship and Yeezy did not authorize Walmart to make or sell the iconic shoes.

The complaint alleges a claim of Unfair Competition under the California Business & Profession Code, which prohibits “any unlawful, unfair, or fraudulent business act or practice, or false, deceptive, or misleading advertising,” and argues that Walmart’s actions were “unfair within the scope of the Unfair Competition Law because it was immoral, unethical, oppressive, and/or unscrupulous in that it was designed to confuse consumers and profit off of the YEEZY brand’s and Kanye West’s popularity and fame.” In support of this, West and Yeezy cite consumer comments indicating that purchasers wanted the Yeezys but purchased the Walmart version because of the lower price for an identical shoe, and that “consumers likely would have purchased the YEEZY FOAM RUNNER were it not for the cheaper knock-off Imitation Shoe. Thus, Walmart’s unfair competition has caused Plaintiffs to lose market share they otherwise would have had.”

Walmart contends that it is not the actual seller of the knock-offs and that the shoe was being sold by third party marketplace sellers.[ii]

Who Started It?

The clash over the cut-out foam shoe is not the first confrontation between the companies. Earlier this year, on April 21, 2021, Walmart filed an Opposition in the Trademark Trial and Appeal Board (TTAB) against a trademark application filed by Yeezy, LLC for a logo that Walmart alleges “resembles” its own mark.[iii]  Yeezy’s trademark application, filed on January 3, 2020, describes the Yeezy logo as, “…eight dotted lines, each comprising three totally shaded circles, with a total of 24 circles, arranged at equal angles as rays from a sun.”[iv] The Intent to Use trademark application also lists a myriad of goods and services including construction of modular homes, hotel services, online chat rooms, and various software and clothing. [v]

In its opposition, Walmart claims “it will be damaged by registration of [Yeezy LLC’s] mark,” and that, “[t]he fame and reputation of [Walmart’s] Mark is such that if Applicant’s Mark is used with Applicant’s applied for goods and services, an affiliation with [Walmart] will be assumed by the consuming public.”[vi] Walmart’s trademark logo is described as, “a design of six rays symmetrically centered around a circle to resemble a spark,”[vii] and the company alleges that it has used the sun ray mark “on musical sound recordings which are highly related and directly overlapping with the Class 9 goods identified in [Yeezy LLC’s] application,” years before the filing date of the Yeezy trademark application.

Walmart’s Opposition also claims, “The likelihood of confusion between Applicant’s Mark and [Walmart’s] Mark is aggravated by the fact [Walmart] often partners with celebrities to create special lines of products and services and [Walmart] utilizes notable pop culture references to promote the goods and services of [Walmart].”[viii] Further, Walmart claims that if the Yeezy mark is registered, it “is likely to cause confusion and lead to consumer deception as to the source, origin and/or sponsorship of the goods and services promoted and sold under Applicant’s Mark and the goods and services promoted and sold under [Walmart’s] Mark, causing damage and injury to Walmart.”[ix]

In an answer filed on June 29, 2021, Yeezy argues that Walmart will not be damaged by the registration of the Yeezy mark because the two design marks (logos) are different and consumers are not likely to be confused. Specifically, Yeezy asserts several Affirmative Defenses, including that there exists, “no likelihood of confusion, mistake or deception because…the purported “[Walmart’s] Mark” is weak and diluted,” and, that “[Walmart] has inadequately pled a claim under Section 2(a) of the Lanham Act.”[x]

Yeezy has requested the TTAB dismiss Walmart’s Opposition and allow the Yeezy application to proceed to registration.

Yeezy Trademark Takeaway

From a marketing standpoint, if Kanye West feels as though the quality of his products and his brand are being cheapened by any mistaken affiliation with Walmart, he should differentiate his brand as much as possible, including selecting a logo that is so far removed from Walmart’s logo, that there is no chance of consumer confusion.

In the context of counterfeits and third party sellers, registered trademarks should be recorded with the US Customs and Border Patrol (CBP) so they can help detain and seize imported goods suspected of being counterfeit. If Kanye West had a trademark on the design of the shoe, he could have submitted it to the CBP to try to prevent the counterfeits from being sold as best as possible.

It will be interesting to see how Kanye West and his Yeezy brand continue to be intertwined with Walmart in these cases and how it will continue to affect any future cases or relationship between them.

 

Read more about trademark battles here: Trademark Tales: Nike Protects Brand from MSCHF’s Satan Shoe

 

[i] https://www.thefashionlaw.com/wp-content/uploads/2021/06/kanye-west-v.-walmart.pdf

[ii] https://www.tmz.com/2021/06/24/kanye-west-yeezy-sue-walmart-foam-runner-shoe-ripoff/

[iii]https://ttabvue.uspto.gov/ttabvue/v?pno=91268856&pty=OPP&eno=1

[iv]https://tsdr.uspto.gov/#caseNumber=88746444&caseSearchType=US_APPLICATION&caseType=SERIAL_NO&searchType=statusSearch

[v]https://tsdr.uspto.gov/#caseNumber=88746444&caseSearchType=US_APPLICATION&caseType=SERIAL_NO&searchType=statusSearch

[vi] https://ttabvue.uspto.gov/ttabvue/v?pno=91268856&pty=OPP&eno=1

[vii] https://tsdr.uspto.gov/#caseNumber=77029689&caseType=SERIAL_NO&searchType=statusSearch

[viii] https://ttabvue.uspto.gov/ttabvue/v?pno=91268856&pty=OPP&eno=1

[ix] https://ttabvue.uspto.gov/ttabvue/v?pno=91268856&pty=OPP&eno=1

[x] https://ttabvue.uspto.gov/ttabvue/v?pno=91268856&pty=OPP&eno=7

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