Yeezy LLC and Walmart have put proceedings in a fight over their respective sun burst logos on hold temporarily, with the Kanye West-owned fashion brand and the American retail behemoth telling the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (“TTAB”) that they are “actively engaged” in settlement negotiations. In a filing on November 11, the TTAB granted Yeezy LLC’s recent motion to suspend the opposition proceedings for 60 days, giving the two companies time to potentially work out their differences in the matter that Walmart initiated this spring in a quest to block Yeezy LLC from registering a similar sun rays graphic.
The suspension of the opposition proceedings comes on the heels of Yeezy filing its answer to Walmart’s amended notice of opposition, in which the Bentonville, Arkansas-based giant claims that “it will be damaged by registration of [Yeezy LLC’s] mark” – a sun burst mark that Yeezy claims that it intends to use on 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, given its use of a similar mark since at least 2007.
Specifically, Walmart argued earlier this year that if Yeezy LLC is permitted to use and register the mark 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’s] mark and the goods and services promoted and sold under [Walmart’s own lookalike] mark, causing damage and injury to [Walmart].”
Confusion is likely, according to Walmart, not only because Yeezy LLC’s mark “resembles” its own mark, but also because the parties’ goods/services overlap. For instance, Walmart claims 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.)
Walmart further contends that the potential for consumer confusion is bolstered by its frequent “partnership with celebrities to create special lines of products and services,” and its use of “notable pop culture references to promote [its] goods and services.” Walmart pointed to “products and marketing campaigns” that it has done “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,” also noting that it “has previously had television advertisement campaigns featuring notable movie figures.”
In response, counsel for Yeezy argued in its October 21 answer that its eight dotted-line logo differs visually from Walmart’s six solid-line logo, which means that there will not be “any likelihood of confusion, mistake or deception” among consumers. “The respective marks, in their entireties, differ in sight and create a different overall commercial impression,” Yeezy argues. Beyond that, in its second affirmative defense, Yeezy asserts – without elaborating – that there is also no likelihood of confusion, mistake or deception between its mark and Walmart’s because Walmart’s sun burst logo is “weak and diluted.”
Walmart has, of course, argued to the contrary, claiming that it maintains robust rights in its trademark, which it argues “became famous prior to the filing date of [Yeezy LLC’s] trademark application.” 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 says that the 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.
Not the only matter underway between the two companies, Walmart and Yeezy are facing off in court, as well, after Yeezy and its founder Kanye West filed suit against Walmart and a handful of unnamed third-party Walmart sellers over the sale of copycat Yeezy foam runner footwear on the retail behemoth’s third-party marketplace site. On the heels of Yeezy and West naming Walmart and co. in an unfair competition complaint in June, Walmart has argued that the case should be tossed out of court on the basis that it is shielded from liability by Section 230 of the Communications Decency Act. That case is currently underway in state court in California.