Early this year, counsel for Kanye West’s Yeezy LLC filed a trademark application for registration for a stylized sun rays graphic. Consisting 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 asserts in its application that it intends to use the mark in connection with everything from clothing and retail store services, and musical sound recordings and streaming to hotel services and the construction of “non-metal modular homes,” among other things. Now, almost four months after Yeezy lodged that application with the U.S. Patent and Trademark Office, Walmart has stepped in, arguing that the Yeezy graphic looks a bit too much like one that it has been using on similar goods/services for over a decade.
According to the notice of opposition that it filed with the Trademark Trial and Appeal Board on April 21 (as trademark attorney Erik Pelton pointed out) , Walmart claims that “it will be damaged by registration of [Yeezy LLC’s] mark,” since it has been using a lookalike mark – “a design of six rays symmetrically centered around a circle” – since at least 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.
As such, if Yeezy LLC is permitted to use and register the mark at the heart of its newly-filed application in connection with the goods and services specified in the application, “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].” That confusion is likely to exist, according to Walmart, since it has used its mark in connection with the goods/services listed in the Yeezy LLC application before Yeezy LLC.
For instance, Walmart asserts that it has used 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 furtherance of the sale of apparel and accessories, and retail services. (Note: Walmart does not claim to be in the business of making or selling “non-metal modular homes, or offering up hotel services.)
Aside from Walmart’s assertion that Yeezy LLC’s mark “resembles” its own mark, the potential for consumer confusion is bolstered by the fact that 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.” And beyond causing potential confusion – and “deception” – about the source of the parties’ respective goods/services, Walmart claims 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.”
With the foregoing in mind and 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.
In separate Yeezy trademark news, a different West-owned entity, Mascotte Holdings Inc., recently filed trademark applications for the logo for Kanye’s impending tie-up with Gap. A mashup between West’s “YZY” mark and Gap’s navy-blue color mark, the three trademark applications that were lodged with the USPTO in early April seek to register the logo for use on “handbags, backpacks, all purposes carrying bags, luggage, toiletry cases sold empty, wallets, key cases, business card cases, reusable shopping bags, umbrellas;” “clothing, namely, tops, bottoms, skirts, dresses, jackets, rainwear, neckwear, sleepwear, loungewear, coats, blazers, rompers, jumpsuits, underwear, swimwear, gloves, socks, hosiery, belts; headwear; footwear;” and “retail and online store services in the field of clothing, footwear, headwear, accessories, bags.”