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Image: Vans

Vans has lodged an amended complaint in the trademark fight that it waged against Walmart last year, accusing the retail titan of infringing its valuable trademarks by “flood[ing] the market with cheap, low-quality, and confusingly similar shoes that harm Vans’ goodwill and reputation.” According to the amended complaint that it filed with the U.S. District Court for the Central District of California on November 8, Vans claims that Walmart has continued to sell allegedly infringing footwear despite the preliminary injunction that was put in place by the court in March, barring Walmart from making, marketing, and selling dozens of infringing footwear styles, and from using “any of Vans’ registered trademarks, or any trade dress or trademark that is substantially similar thereto, on or in connection with [Walmart’s] shoes or related services.” 

Between its filing of a motion for preliminary injunction and the court’s March 31 preliminary injunction order, Vans alleges that it “discovered that Walmart was selling even more infringing shoes, featuring trade dress and marks that are confusingly similar to Vans’ asserted trade dress rights and marks.” And since the injunction was put in place, Vans asserts that Walmart’s “escalating” infringement campaign has seen it “continue promoting, offering to sell, and selling” shoes that are “colorable imitations of the enjoined sneakers and that violate Vans’ asserted trade dress rights and trademarks,” including Vans’ stripe logo, and its OLD SKOOL shoe and Checkerboard Slip-On trade dress. Specifically, Vans claims that Walmart released of a new collection of shoes under its “Tredsafe” line, which consists of a “slightly modified version of its already enjoined side stripe design.” 

Beyond that, Vans contends that in an effort to expand its “scheme to knock off Vans by selling infringing shoes in the United States,” Bentonville, Arkansas-headquartered Walmart began selling “many of the infringing shoes (as well as additional infringing shoes designed in collaboration with [fellow defendant] ACI) in other countries, including Canada.” (According to Vans, ACI is “the co-designer, manufacturer, and importer for most, if not all, of Walmart’s infringing in-house shoes [at issue] in this complaint.”)

Vans sneakers and allegedly infringing sneakers from Walmart

“Evidence produced by Walmart thus far in the case demonstrates that Walmart and its U.S. employees actively participated in the design of the infringing shoes, including infringing shoes that are being sold by Walmart in Canada,” Vans argues, stating that “Walmart’s U.S. employees directed ACI to design the infringing shoes by copying Vans’ shoes.” To make matters worse, Vans contends that “Walmart’s U.S. employees specifically directed ACI to make the Walmart shoes look more like Vans shoes, including by ‘cad[ing] up’ (i.e., diagraming) the infringing shoes based on Vans’ shoes and copying the exact color schemes of Vans’ shoes.” 

And still yet, Vans says that the shoes being offered up by Walmart in Canada were actually meant to be part of Walmart’s Spring 2022 collection in the U.S., and “after entry of the Court’s preliminary injunction order, Walmart and ACI diverted [those] shoes to Canada or other foreign markets in violation of the Lanham Act and the Court’s preliminary injunction order.” 

Vans goes on the make claims that mirror its initial complaint. Among other things, Vans maintains that in a brazen attempt to bank on the appeal of its brand and famous offerings, Walmart has co-opted its “iconic” jazz-stripe trademark and OLD SKOOL trade dress by way of “blatant knockoff” that are “likely to cause confusion, deception, and mistake [among consumers] by creating the false and misleading impression that [its] goods are produced or distributed by Vans, or are affiliated, connected, or associated with Vans, or have the sponsorship, endorsement, or approval of Vans.”  

Not limited to the copycat footwear, Vans asserts that Walmart goes further to confuse consumers by “intentionally market[ing] all of its infringing shoes as either ‘Skate’ or ‘Retro’ sneakers in an attempt to suggest a connection with Vans’ products,” and by offering up the allegedly infringing footwear alongside what appears to be authentic Vans sneakers, the latter of which are offered up by sellers on Walmart’s third-party marketplace.  And still yet, “Walmart also enlists endorsers and influencers to promote its products, including [the] infringing shoes,” per Vans, which claims that Walmart is “well aware” that many of these individuals promote the allegedly infringing footwear by explicitly referring to them as “Vans dupes” or “Vans knockoffs,” and/or by “intentionally trying to divert potential customers away from Vans.”   

On the heels of Vans filing suit against Walmart in November 2021 and seeking injunctive relief (which Walmart pushed back against, arguing that Vans’ trademark rights are “weak,” and consumers are unlikely to be confused as to the source of the parties’ offerings, among other things), a judge for the U.S. District Court for the Central District of California sided with Vans. In his March 2022 order, Judge David Carter found that Vans “succeed in showing that its trademarks and trade dresses are valid and protectable,” and that a “‘reasonably prudent consumer’ in the marketplace is likely to be confused about the origin of the good or service bearing one of the marks.” 

With that in mind, the court ordered that Walmart refrain from “using Vans’ Side Stripe Mark, Old Skool trade dress, SK8-Hi trade dress, Old Skool Toddler trade dress (each as defined in Vans’ Complaint in this action), or any of Vans’ registered trademarks, or any trade dress or trademark that is substantially similar thereto, on or in connection with [its] shoes or related services” for the duration of the litigation. 

The case is Vans, Inc. et al, v. Walmart, Inc., et al, 8:21-cv-01876 (C.D.Cal.)