Walmart says Spark logo is synonymous with its brand, making Yeezy Mark ‘likely’ confusing
Walmart has filed a new opposition motion in its case against a ‘confusingly similar’ trademark that is at the center of a registration application filed by Kanye West’s Yeezy LLC in January 2020 for use on everything from clothing and retail store services, and musical sound recordings and streaming to hotel services and “non-metallic modular home” construction, among others. According to the notice of opposition which it filed with the Trademark Trial and Appeal Board (“TTAB”) of the United States Patent and Trademark Office in April 2020, Walmart claims that “it will be damaged by the registration of [Yeezy LLC’s] mark ”, since it uses a double mark -“ a design of six spokes symmetrically centered around a circle ”- since at least 2007… on the exterior and interior signage of [its] more than 5,000 points of sale [and] on its e-commerce platform.
In the wake of the opening of opposition proceedings to attempt to block the recording of a stylized sunbeams graphic filed by Yeezy, an interlocutory attorney for the TTAB shot down one of the claims of Walmart, based in Bentonville, Ark., In an order dated September 3, in that it asserted that the retail giant’s deception / misapplication plea – which he also describes as a “false suggestion of connection ”- is insufficient.
Specifically, TTAB interlocutory attorney Mary Catherine Faint states that in order to make a viable false suggestion of a connection claim under Trademark Law § 2 (a), the opposing party (Walmart, here ) must state that “the applicant’s mark falsely suggests a connection with the personality of the opponent, points only to the opponent and is famous enough for a link to the opponent to be presumed. Walmart fails here, according to Faint, because there is “a distinction between a term perceived as a company’s trademark and [the mark] being the personality of a company ”, and Walmart does not establish that its own brand“ Spark Design ”is its“ identity or personality ”. As such, Faint struck out Walmart’s claim of deception / misapplication of origin, giving it the opportunity to re-litigate it and leaving in place its likelihood of confusion, dilution, and lack of genuine intent. ‘use complaints.
(Faint notes that “it’s hard to say what is meant by” Walmart’s deception / misapplication of origin, which also cites a “false suggestion of a link,” because “the deception can do part of a claim under § 2 (d) Trademark Law, while the false appellation of origin is a claim under § 43 (a) “in a civil action” and is, therefore, inapplicable to [TTAB] procedure.”)
Fast forward to September 23, and Walmart amended its opposition request, replacing its deception / misapplication claim with a false connection suggestion claim under Trademark Law § 2 (a) , and alleging that its trademark “Spark Design” “is, and since its introduction in 2007, has been widely and widely used to identify [Walmart]. “For example, Walmart’s lawyer argues that the mark” appears on all [Walmart’s] physical stores, on virtually every page of [its] e-commerce website, on virtually all shopping bags handed out to customers, on virtually all television and online commercials for [Walmart], and elsewhere.”
With such consistent and widespread use in mind, Orrick’s Mark Puzella claims on behalf of Walmart that the brand “has become synonymous” with Walmart. And as a result, “[C]Consumers and others are very likely to recognize that the Walmart brand uniquely and unmistakably points to [Walmart]. ”
As for Yeezy’s brand, Walmart says it is “a close approximation of [Walmart’s] logo, which was widely used long before [Yeezy’s] filing date ”because“ the designs of both parties incorporate lines of equal length radiating from the center to resemble a spark or ray of the sun ”. In the light of such elements, and given “the reputation and reputation of [Walmart’s] brand (and the global reputation of [the retailer] as an institution) ”, Walmart argues that when“ the Yeezy brand used with its requested goods and services (which are very similar or otherwise related to those claimed by [Walmart’s] mark) “, a connection between Walmart and Yeezy” would be presumed “where such a connection does not exist.
In this context, Walmart asserts that Yeezy’s brand “would wrongly suggest a link with [Walmart], To [Walmart’s] prejudice ”, and therefore the registration of the mark should be refused.
No chance of confusion
Walmart’s amended pleading comes months after Yeezy responded to opposition, questioning the validity of the rights Walmart claims to have in the ‘Spark Design’ brand and the ‘outsized claims’ that the retail titan framed in its initial opposition in an “attempt to extend its ‘Spark Design’ far beyond its federal and common law trademark rights.”
In his June 29 response, Yeezy claimed that Walmart’s initial opposition failed on several fronts. Mainly, the rapper’s lawyer-slash-designer argued that Walmart “certainly knows, as does the consuming public, that the last thing [Yeezy] wants to do is to associate with [Walmart]”, Something that became even clearer with Yeezy and West’s filing of the unfair competition lawsuit against Walmart in connection with the sale of copy – and” substandard “- Foam Runner shoes. In this vein, Walmart’s claims that Yeezy aims “to mislead consumers into mistakenly believing that the parties are associated or that [Yeezy’s] goods and services emanate from [Walmart are], in layman’s terms, absurd, ”Yeezy’s attorney said. Ultimately, Yeezy argued that Walmart would not actually be damaged by registering the design mark Yeezy, largely because the two brands are different and consumers are unlikely to be confused.
In addition to denying most of Walmart’s claims in its initial opposition, Yeezy presented a number of affirmative defenses, arguing, among other things, that Walmart “inexplicably relies on two canceled trademark registrations” – including one that Walmart says is “Indisputable and provide[s] prima facie and conclusive evidence of [its] ownership and exclusive rights of use [the Spark Design] trademark ”- and“ an abandoned trademark application as a basis for its claims ”, which he cannot use as a basis for his action.
Faint struck out two of those affirmative defenses in its Sept. 3 order, stating that Yeezy’s first affirmative defenses – in which she claims two canceled trademark registrations and one abandoned trademark application cited by Walmart in its initial opposition “cannot be relied on in support of any claims claimed by [Walmart], and they should be struck off the opposition “- and his fourth line of defense – in which Yeezy contends that Walmart” insufficiently argued a claim under section 2 (a) of the Lanham Act “- are not “true affirmative defenses because they relate to an assertion of the insufficiency of the pleading of [Walmart’s] rather than a defense to a duly pleaded claim.
Interestingly, lawyers for both sides (correctly) argue in their respective documents that their clients are well known. Walmart, 59, points out that it has “more than 5,000 outlets”, that its e-commerce site “has the second largest e-commerce market share in the United States” and that it has broadcast ” nationwide television commercials. , including ads that air during the Super Bowl. Meanwhile, Yeezy’s attorney claims its founder Kanye West is far from an unknown figure, and in fact is “internationally famous”.
Yet the two sides exercise these claims in different ways, with Walmart claiming that it, and presumably its ‘Spark Design’ brand, are so famous that the brand is entitled to broader protection against third-party uses of similar brands. Therefore, Walmart essentially contends that almost all similar brands used on similar products / services will automatically evoke an association with it in the minds of consumers. On the flip side, Yeezy claims that “if anything, the opposite is true,” and that because West is so famous in its own right and the Sunbeam brand Yeezy “is closely associated with it. To [him], Which consumers are likely to associate the brand with Yeezy, apparently allowing the brands of the two companies to coexist in the market without risk of confusion.
As of now, it’s not clear (at least to me) whether consumers actually associate the Sunbeams brand with Yeezy (or West). For my part, I have not seen it used on a large scale by Yeezy or West, and it should be noted that Yeezy’s application was filed with an intention of use, and therefore, a specimen showing actual use n was not included. This back-and-forth can of course be a game-changer to some extent, as the sunshine marks of both parties have been plastered all over the opposition-related media.