• Arjit Roshan

Kanye West, Walmart, and Trademark Disputes

Updated: Jun 17, 2021

Angela Weiss/AFP via Getty Images

You’re not free from intellectual property disputes just because you’re a hip-hop legend. In late April, Walmart filed an opposition to Mr. West’s trademark application for the following logo for his company, YEEZY LLC (fig. 1), arguing primarily that the mark is too similar to their own Walmart spark logo. We can break this emerging dispute down to better handle the trademark application process and understand concepts like confusing similarity and intent to use.

Figure 1

Figure 2

  1. The Process

When individuals or businesses applying for trademarks, they start with a form filled in through the USPTO TEAS Plus portal. The applicant submits the mark, contact information, a description, and the goods and services sold under the mark. Applicants can choose between a 1(a) filing, where they’re already using the mark in commerce. They can submit a specimen of use when they first apply, or a 1(b) filing, which indicates that they intend to use the mark shortly and will have to submit a statement of use later (1(b) filings entail an additional $150).

Once applicants submit their application, it is assigned to an Examining Attorney after a few months. The Examining Attorney searches for competing marks and reviews the application to make sure there are no problems. If the Examining Attorney finds a problem, they will send an office action letter that requires a timely response to ensure the application remains live.

At this stage, The Examining Attorney found no competing marks, and Mr. West’s application only required a correction to a signature error:

After a trademark application has gone through this approval process, it is published in the Trademark Official Gazette. There is a window of time where outside parties can file an opposition to the mark's registration. Large corporations like Walmart and Disney have teams of IP lawyers that monitor this publication to look for marks that they feel would dilute the distinctiveness of their client’s brand.

Here, Walmart sent a letter of protest to the office in November, even before publication in the Gazette. Regardless, the Examining Attorney decided to publish it in the Gazette, and Walmart filed a formal Notice of Opposition in April.

Now that there is an opposition, registration or refusal of Mr. West’s mark will be decided only after the Trademark Trial and Appeal Board resolve this dispute.

  1. The Dispute

Walmart opposed registration of the mark on four counts:

● Likelihood of Confusion

● Deception/False Designation of Origin

● Dilution

● Lack of Bona Fide Intent to Use

The first count, the Likelihood of Confusion, is the most straightforward. Walmart argues that Mr. West using this logo could cause potential confusion to consumers given the similarity of design and the products sold under it. The whole purpose of trademarks is to brand and distinguish a company’s goods and services from those of its competitors-for instance, when trying to buy a collared shirt; you can tell the different brands by looking at the lapels and recognizing the different logos for Polo, Lacoste, and the U.S. Polo Assn.

When considering whether a mark is confusingly similar to another, the TTAB and courts weigh several factors:

● The similarity of the sound, meaning, and appearance of the marks

● How strong the opposer’s trademark is; stronger marks are distinctive and recognizable like Google, weaker marks are more generic and descriptive, like Singapore Airlines. An application that resembles a stronger trademark will be considered less favorably than one that resembles a weaker, more generic one.

● The contexts in which consumers will encounter the marks; the more distinct the contexts, the less likely it is that similar marks may confuse one another.

● Whether the marks are for goods and services in competition; if they compete, then the similarity is more damaging to the applicant.

Essentially, the USPTO and federal courts are trying to furnish a sound marketplace where consumers can identify products and businesses may be rewarded for acquired reputation and goodwill. This is why the likelihood of confusion is a core concept in trademark litigation.

The other two counts are strongly related to this concept of likelihood of confusion.

The Deception/False Designation of Origin count is basically emphasizing that because consumers may mistake Mr. West’s Yeezy Products for those of Walmart, use of the mark would constitute deception or fraud, violating section 2(a) of the Lanham Act.

The Dilution count doubles down on the point that registration of Mr. West’s mark will diminish the value of Walmart’s mark by reducing the distinctiveness that makes it an effective trademark, causing clear material injury to Walmart.

Finally, we have the Lack of Bona Fide Intent to Use count. This count is harder to prove but still presents a potential challenge to registration. Walmart is essentially saying that although Kanye West filed under 1(b), where he as the applicant swore that he had a bona fide intent to use the mark in commerce, he did not actually have any plans to use the mark for the proposed international classes. To prove this, the opposition may ask Mr. West to produce documents that he had clear plans to use the mark for the various international classes he applied for--including retail store services, hotel services, and the construction of modular homes. Given the artist’s perennial habit of promising big projects that fail to materialize--including a video game, an animated series, and numerous albums---this may present a genuine threat to the application and serve as grounds for refusal of registration.

Looking at these counts, Walmart has a few strong arguments. The proposed uses in Mr. West’s 1(b) filing certainly overlap with Walmart’s trademark registration in several areas, including clothing and retail services (class 25 and 35), creating a possibility for consumer confusion.

However, Mr. West does have some angles for defense. For example, an argument could be made as to the visual similarity of the marks. Given that Mr. West’s mark consists of eight “rays,” which are made up of individual dots, whereas the Walmart logo is six bold beveled lines, Mr. West could argue that consumers can easily distinguish between the marks and the products that bear them.

To complement this argument, Mr. West could also argue that the contexts in which consumers will encounter these marks will be so distinct as to obviate any possible source of confusion; Mr. West operates primarily in music and the high arts/fashion space whereas Walmart is a budget retail store. Mr. West could make a compelling argument that his trade channels and target consumers are very different from Walmart, reducing any likelihood of confusion.

Regardless of the outcome, the proceedings will be expensive, time-consuming, and delay Mr. West’s business ventures. This is why it’s best to hire an experienced trademark attorney to advise you before applying for trademarks so that you can avoid disputes like these.

  1. How to Avoid Trademark Disputes

The first step in avoiding trademark disputes is to hire a trademark attorney. An attorney can help to identify potential competing marks and future conflicts.

Here at WRO Law and Strategy, we offer a comprehensive Trademark Search as a part of our Trademark Package. This search checks for any competing marks that could cause you problems down the line.

After presenting you with the search, we help you decide what course of action is best for you, given your business goals and tolerance for risk. We also help you with any correspondence and negotiations you need to make to secure your mark.

Our services have ranged from helping clients negotiate the purchase of graphics they wanted for exclusive use for their business, assisting young artists in selecting the relevant international classes for their stage names, to issuing cease and desist letters to businesses using our client’s marks. From registration to protection of your trademark, our team is ready to assist you.

If you’re an individual or business looking to register a trademark, schedule a free consultation or email me at rolanzo@wro-law.com

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