The Fashion Law reports that Walmart has filed a notice of opposition with the U.S. Patent and Trademark Office arguing that a 2020 trademark application filed by Kanye West's YEEZY company contains a logo that is so similar to that of the multinational retail corporation that it is likely to cause confusion.
According to the original application, YEEZY may intend to use the logo for clothing and retail store services, musical sound recordings and streaming, hotel services, and the construction of “non-metal modular homes,” among other things.
The design in question features “eight dotted lines, each comprising three totally shaded circles, with a total of 24 circles, arranged at equal angles as rays from a sun,” as you can see below.
YEEZY's would-be trademark shares some pretty obvious similarities to Walmart's logo, which consists of six yellow rays symmetrically positioned in a circle to resemble a spark.
Walmart argues that YEEZY's use and registration of the sun design “is likely to cause confusion, mistake, and deception as to the source or origin of [YEEZY's] goods and services and potentially create a false affiliation with [Walmart's] Mark which will injure and damage Opposer and the goodwill contained within Opposer’s Mark.”
There's potential space for confusion, which is the entire base of Walmart's suit.
For example, Walmart has used its logo “on musical source recordings that are highly related and directly overlapping with the Class 9 goods identified in [YEEZY LLC’s] application,” as well as to sell apparel, accessories, and retail services. On top of that, the retailer also frequently “partners with celebrities to create special lines of products and services,” and also “utilizes notable pop culture references to promote [its] goods and services.”
From Walmart's perspective, “there is no issue of priority” considering they used the mark as early as 2007, a whole 13 years before Kanye's team filed the trademark application.
As of September 23, the lawsuit is ongoing. That was the date that Walmart's lawyer filed an amendment to its initial opposition to flesh out the retailer's argument and YEEZY and Kanye, who it refers to — perhaps generously — as "former candidate for President of the United States."
Basically, Walmart is seeking to convince the judge to "refuse registration of" the YEEZY trademark.
When YEEZY replied to Walmart in June, though, it was pretty frank.
Kanye's company stated in court that the big box store "certainly knows, as does the consuming public, that the last thing [YEEZY] wants to do is associate itself with [Walmart]," which YEEZY made extra obvious when it sued Walmart for selling fake Foam Runners.
YEEZY believes its mark is distinct enough to justify the suit's dismissal.
But Walmart isn't gonna step down, just because YEEZY lawyers don't mince words. In Walmart's amended complaint, it asserts that "The goods and services contained in [YEEZY]’s Trademark Application are exceedingly numerous" and that YEEZY "does not have a bona fide intent to use [the trademark] in connection with all the goods and services set forth in Applicant's Trademark Application."
Admittedly, YEEZY has filed to use its new mark on plenty of stuff but it also hasn't actually used the image at all since its initial filing because of the ongoing lawsuit.
