;
Image: Patagonia

Patagonia is suing Walmart for allegedly offering up t-shirts bearing one of its copyright and trademark-protected designs. According to the copyright and trademark infringement, and trademark dilution lawsuit that it filed with the U.S. District Court for the Central District of California on October 6, Patagonia claims that Robin Ruth produced and sold apparel “bearing nearly identical copies of Patagonia’s P-6 Trout logo and artwork” – replacing Patagonia’s PATAGONIA trademark with the word “Montana” – and fellow defendant Walmart “purchased and resold those copycat products in several [of its] retail stores … in substantial quantities,” thereby, running afoul of its copyright and trademark rights.

In the newly-filed suit, Patagonia claims that Walmart and its supplier Robin Ruth “have promoted, offered for sale, and sold shirts bearing designs and logos that are nearly identical to the P-6 Trout logo and P-6 logo, only replacing Patagonia’s PATAGONIA word mark with the word ‘Montana,’” which Patagonia alleges “inevitably will imply to consumers that Patagonia has endorsed or authorized these products.” 

In addition to claiming trademark infringement, Patagonia argues that “the PATAGONIA brand and P-6 logo” – the latter of which consists of “a multi-colored label inspired by a silhouette of the jagged peaks of the Mt. Fitz Roy skyline” – are “famous within the meaning of the Trademark Dilution Revision Act.” They also “enjoy strong consumer recognition and are recognized around the world and throughout the United States by consumers as signifying high quality products made by a responsible company,” per Patagonia. Against that background and given that it has “annually spent enormous amounts of time, money, and effort advertising and promoting the products on which its PATAGONIA trademarks are used,” Patagonia sets out both federal and California state law dilution claims, alleging that the defendants’ conduct is likely to dilute its P-6 Trout logo by “diminishing its distinctiveness.” 

Patagonia p-6 Trout logo (left) & Robin Ruth shirt (right)
Patagonia P-6 Trout logo (left) & a Robin Ruth shirt (right)

(While “Patagonia” has been found to be “famous” enough for the brand to successfully wage dilution claims over it (that is what a C.D. Cal. Judge determined in the case that Patagonia filed against Anheuser-Busch for allegedly infringing and diluting the word mark by way of its “Patagonia Brewing Co.” brand), it is difficult to imagine that the P-6 Trout logo – which consists of “a stylized design of a mountain profile superimposed over a design of a fish” and which claims rights in the color scheme – also meets the high bar for fame established by the Trademark Dilution Revision Act.)

At the same time, Patagonia alleges that the “infringing designs are substantially similar to the P-6 logo artwork,” for which it maintains a federal copyright registration. As such, Walmart and Robin Ruth’s “unlawful reproduction, advertisement, distribution, and/or sale of Patagonia’s proprietary design constitutes copyright infringement,” Patagonia contends, arguing that the defendants “acted intentionally and in bad faith when they reproduced Patagonia’s copyrighted work (in identical or substantially similar form), and advertised, distributed, displayed, and/or sold products bearing the infringing designs.”

With the foregoing in mind, Patagonia sets out claims of federal and state law trademark infringement and dilution, copyright infringement, and unfair competition, and is seeking injunctive relief, including requiring Walmart and Robin Ruth to delivery any infringing inventory to Patagonia, and barring them from applying to register “any trademark which is likely to be confused with or that dilutes the distinctive quality of Patagonia’s trademarks,” as well as monetary damages. 

Walmart is also currently facing off against trademark claims lodged against it by Vans, which has argued that the retail titan embarked on “an escalating campaign to knock off virtually all of [its] bestselling shoes,” infringing its trademark rights in the process. Vans scored a preliminary win in the case this spring, with a California federal court granting its motion for a preliminary injunction, and ordering Walmart to refrain from making, marketing, and selling footwear that bears Vans’ trademarks, including almost 30 allegedly infringing shoe styles that it has offered up in the past, for the duration of the case. 

The case is Patagonia, Inc. v. Walmart, Inc., et al., 2:22-cv-07311 (C.D. Cal.).