During the early months of the year, counsel for Kanye West’s Yeezy LLC filed a trademark application for registration for a stylized sun rays graphic. Made up of “eight dotted lines, each comprising three totally shaded circles, with a total of 24 circles, arranged at equal angles as rays from a sun”, Yeezy LLC’s states in the application the usage of the mark in connection with everything ranging from clothing to retail store services, musical sound recordings, streaming to hotel services and the construction of “non-metal modular homes” among other things. Four months after the application, Walmart stepped in and argued about the Yeezy graphic’s similarity to their own mark which they use on their goods/services for well over a decade.
As per the notice of opposition filed with Trademark Trial and Appeal Board on April 21, Walmart has made claims that “it will be damaged by registration of [Yeezy LLC’s] mark” as it has been using the lookalike mark – “a design of six rays symmetrically centered around a circle” from early 2007. As a result of its consistent use of the mark, which “can be found prominently featured on the exterior and interior signage of [its] more than 5,000 retail outlets, through the ecommerce platform www.walmart.com, which has the second largest e-commerce market share in the U.S., and throughout [its] nationwide television commercials, including commercials aired during the Super Bowl,” Walmart claims that its mark “has become well known and famous as a distinctive indicator of the origin of [its] goods and services and a symbol of [its] goodwill” as a company.
If Yeezy LLC is permitted to use and the register the mark on their goods and services as per the specifications, “such use and registration 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 [Yeezy LLC’s] mark and the goods and services promoted and sold under [Walmart’s] mark, causing damage and injury to [Walmart]”. The confusion will prevail, according to Walmart, since it was the initial user of the mark in connection with the goods/services listed in the Yeezy LLC application before Yeezy LLC.
For example, Walmart argues that it had made use of the sun ray mark “on musical source recording that are highly related and directly overlapping with the Class 9 goods identified in [Yeezy LLC’s] application” as well as in the growth of the sale of apparel, accessories and retail services.
Apart from the resemblance to its own mark, Walmart fears that customer confusion will further grow as Walmart “often partners with celebrities to create special lines of products and services,” and also “utilizes notable pop culture references to promote [its] goods and services.” For example, Walmart says that it “has sold products and done marketing campaigns in association with Jennifer Garner, the cast of Queer Eye, Drew Barrymore, Kendall and Kylie Jenner, Ellen DeGeneres, and Sofia Vergara to name a few,” and additionally, “has previously had television advertisement campaigns featuring notable movie figures”. Apart from the confusion and deception, Walmart has claimed that the Yeezy LLC mark “is likely to cause, and will cause, dilution of the distinctive value of” Walmart’s mark, since it is “a distinctive and famous trademark which became famous prior to the filing date of [Yeezy LLC’s] trademark application”.
Walmart having the upper hand given that “there is no issue of priority,” as Walmart’s “date of first use [for its mark] is at least as early as 2007, which precedes [Yeezy LLC’s] filing date of January 3, 2020,” Yeezy LLC’s application should be blocked, Walmart argues, and its opposition should be upheld.
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