MSCHF has landed on the receiving end of a new lawsuit over its Wavy Baby sneakers. In addition to facing off against Vans in the suit that the footwear company filed against it last year for allegedly infringing various trademarks, including its OLD SKOOL sneaker trade dress, MSCHF is now being accused of infringing WaveyBaby Holdings, LLC (“WaveyBaby”)’s brand name. In the complaint that it filed with the U.S. District Court for the Eastern District of New York on Friday, WaveyBaby claims that MSCHF and its founder and CEO Gabriel Whaley – who is also named as a defendant – are on the hook trademark infringement, unfair competition, and civil conspiracy.
According to the complaint, WaveyBaby claims that it got its start in 2020, and “through its collaboration with various internationally acclaimed hip-hop and pop music recording artists, has established substantial goodwill and consumer recognition” in the WaveyBaby name. The result: “Seeing the WaveyBaby name and its distinctive trademark allowed consumers to know that the apparel and shoes come from WaveyBaby solely and instantly conveys WaveyBaby’s reputation for authenticity, quality, and creative expression,” the plaintiff asserts.
Against that background, WaveyBaby claims that MSCHF’s Wavy Baby shoe – which it released in collaboration with Tyga in April 2022 – “blatantly and unmistakably incorporates a confusingly similar and almost identical variation of [WaveyBaby’s] trademark on similar products.” (WaveyBaby Holdings filed an application for registration for “WaveyBaby” for use on clothing in 2019 and received a registration from the U.S. Patent and Trademark Office in February 2021.)
MSCHF was aware of its trademark rights prior to its release of the sneakers,WaveyBaby alleges, asserting that “immediately upon learning of [MSCHF’s] involvement in this matter, WaveyBaby sent a cease-and-desist letter to [the company] via its counsel on or about April 12, 2022.” Despite receiving the cease-and-desist letter, which “outlined WaveyBaby’s trademark ownership and the high potential for confusion” between the WaveyBaby brand and its offerings and the MSCHF sneaker, WaveyBaby contends that MSCHF “defiantly pressed forward and continued to aggressively market” the headline-making sneaker and made it available for purchase on the MSCHF app on April 18.
MSCHF’s marketing and sale of the Wavy Baby sneakers is “likely to and in fact already [has] caused harm due to [MSCHF’s] use of a confusingly similar name to [its] trademark, according to WaveyBaby. In addition to confusion, WaveyBaby also argues that MSCHF’s “infringing shoe [has] resulted in highly publicized litigation” between MSCHF and Vans Inc. and that “such negative publicity on the shoe has resulted in consumers confusing [MSCHF’s] infringing brand for that of [WaveyBaby] further believing that [WaveyBaby] is involved in ongoing litigation with Vans Inc., when in fact they are not.”
“Despite exchanging several letters and attempting to negotiate an amicable resolution of this matter,” WaveyBaby says that it and MSCHF have been “unable to agree on an appropriate resolution,” prompting it to lodge trademark infringement, unfair competition, New York Unfair Trade Practices, and civil conspiracy claims and seek injunctive relief to bar MSCHF from “advertising, marketing, promoting, offering for sale, distributing, or selling the infringing Wavy Baby shoes,” using an mark that is “a copy, reproduction, or simulation of, or confusingly similar to” WaveyBaby’s trademark, etc., and monetary damages.
In light of WaveyBaby’s claims, it is not difficult to imagine some of the defenses that MSCHF will raise in order to chip away at the plaintiff’s case. One of the most obvious is lack of use as a mark, in furtherance of which MCHF might argue that it is not actually using the terms “Wavy Baby” to indicate the source of the footwear but as the name of the sneaker style – or better yet, as MSCHF puts it in connection with the Vans case, the name or title of the “project” at play. A lack of use as a mark argument could be significant, as a finding of trademark infringement requires the unauthorized use of a trademark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services. Inherent in this is the need for the defendant to be using the allegedly infringing mark as a source identifier.
While it may be worth noting that MSCHF – which has filed an array of trademark applications for registration for various marks to date – has not filed an application for registration for “Wavy Baby,” which could indicate lack of intent to use the name as a mark, WaveyBaby will undoubtedly argue – as it does in its complaint – that MSCHF is, in fact, using “Wavy Baby” in a trademark capacity. As WaveyBaby sets out in its complaint, even though MSCHF has not applied for registration of the “wavy” mark or obtained federal registration, it “deceptively includes the ® symbol in connection with the ‘wavy’ mark, suggesting that the mark is federally registered.”
To this, MSCHF very well may counter by claiming that it used the ® symbol exclusively in furtherance of its alleged parody of Vans and its branding (Vans includes the ® symbol next to its stylized version of the brand name); after all, MSCHF has claimed that the purpose of its limited-edition Wavy Baby sneakers are a parody of Vans’ role in “sneakerhead” culture and its push to operate in the metaverse.
A rep for MSCHF was not immediately available for comment.
The case is WaveyBaby Holdings, LLC v. MSCHF Product Studio Inc, et al., 1:23-cv-02486 (EDNY).