Image: Walmart

Jetblue versus Jetblack: those are the two terms at the center of a new lawsuit between JetBlue Airways Corp. and Walmart. The Long Island City, New York-headquartered airline claims that Walmart and its e-commerce company are running afoul of the law by “improperly” adopting the “confusingly similar and dilutive” Jetblack trademark for use in connection with the members-only personal shopping and concierge service it launched with Rent the Runway co-founder Jenny Fleiss in 2017.

According to the 53-page trademark infringement suit that JetBlue filed on Friday in a New York federal court, for the past two years, Walmart and have been busy filing trademark applications for the word “Jetblack” for use on a wide variety of goods and services –  ranging from “retail sales” to “booking activities” – as part of the new shopping venture that combines “the convenience of e-commerce with the customized attention of a personal assistant.”

Despite the differences in their core businesses – an airline company versus an e-commerce concierge service, JetBlue asserts that it has “a long history of using the JetBlue trademarks on various branded products including, but not limited to, clothing, bags, toys and earphones,” and “uses and has rights in the JetBlue trademarks for an online retail site, which is a key component of its brand.”

More than that, JetBlue points out that it “operates brick and mortar retail locations including, but not limited to, pop up stores and pop-up retail experiences,” and still yet, offers “concierge-type services, including arranging and advising on travel and other recreational activities.”

With such efforts in mind, paired with the fact that Walmart has also filed trademark applications for “Jetgold” and “Jetsilver,” and is moving “closer to JetBlue’s core services by offering travel and transportation [booking] services,” the retail giant’s use of the mark “Jetblack” is “likely to cause significant consumer confusion and dilution of the JetBlue brand in the U.S. and around the world,” per JetBlue, and Walmart knows it.

JetBlue argues that Walmart “knew of JetBlue’s existing trademark rights in the JetBlue trademarks before it began using the infringing [‘Jetblack’ mark] and before filing applications to register the ‘Jetgold’ and ‘Jetsilver’ marks.” As such, JetBlue claims that Walmart’s behavior has not just been enacted in “bad faith,” but it has been carried out in “a transparent attempt to trade on the goodwill associated with the JetBlue trademarks.”

Interestingly, while JetBlue acknowledges that such “improper” efforts by Walmart might not primarily be meant to pit the Jetblack concierge service against JetBlue’s airline services, and more likely come “as part of a larger effort [by Walmart] to compete with,” JetBlue argues that it is being harmed, nonetheless.

To be exact, JetBlue argues that the defendants’ use of the “Jetblack” mark is damaging its brand, as the use of such a similar trademark stands to confuse consumers about Walmart’s association with JetBlue. (Hint: there is not association between the two). Such “confusion, mistake or deception among the public” is especially likely, according to the airline co., given that it maintains than “120 trademark registrations” for the word “JetBlue,” which cover airline services, of course, but also extend to apparel and accessories, as well as retail services, which is precisely how the Jetblack mark is being used.

As a result of the foregoing, JetBlue has asserted claims of federal and common law trademark infringement, trademark dilution, false designation of origin, and federal and common law unfair competition, among others. It is seeking injunctive relief to prevent further infringement of its rights in the JetBlue marks by Walmart and co., as well as damages “for the harm caused to the corporation and to the value associated with the JetBlue marks in the form of a permanent injunction, as well as compensatory and punitive damages in connection with the defendants’ unlawful acts.”

“We respect the intellectual property rights of others,” a Walmart spokesman said in a statement on Monday. “We take this issue seriously, and once we are served with the complaint will respond appropriately with the court.”

*The case is JetBlue Airways Corp v. Inc et al, 1:19-cv-05879 (SDNY).