What Happens When a Trademark is Disputed - Stratford Group Ltd.

For over a decade Walmart has been using their well-known yellow spark logo to symbolize their brand. Recently, celebrity rapper Kanye West filed for trademark protection on a logo for his Yeezy brand that Walmart says is similar. One of Stratford’s registered trademark agents, Kim Capiau explains what this might mean for the Yeezy brand and what the Trademark Trial and Appeal Board looks for when it receives a complaint.

A Tale of Two Trademarks

The essence of trademark protection is to solidify brand recognition and reduce potential confusion among consumers. In practice, however, things are not always so clear cut.  Here’s what we know so far about the Kanye-Walmart trademark dispute…

Walmart filed a notice of opposition on April 21, 2021 at the US Patent and Trademark Office, challenging the logo trademark application that was submitted for Yeezy, Kanye West’s brand. Walmart believes the logo design depicted is confusingly similar to Walmart’s well-known logo design.

Here’s where it get’s interesting and potentially confusing…West partnered with Gap to release a Yeezy line in their stores in early 2021, the same year that Gap inked a deal with Walmart. The rivals will partner up to release a Gap branded home goods line in Walmart locations.

Traditionally, similar marks can sometimes be allowed to co-exist if they are used in different industries or applied to vastly different products so that there is little chance for consumers to confuse the marks (and by extension, the companies that own them) with each other. Some could argue that this connection is enough to link Walmart and West in a way that would be confusing to the general public.

Walmart vs. West

Walmart owns the trademark registrations seen above mainly for retail store services and has been using their mark since at least 2008. Kanye’s mark (seen above, on the right) was filed on January 3, 2020 for a wide-ranging list of goods and services including audiovisual equipment, computer software, clothing, and retail store services.

The US examiner who reviewed Kanye’s trademark application did not refuse it based on a likelihood of confusion as to the source of the associated goods of services. So Kanye’s trademark was approved and advertised. Walmart opposed Kanye’s trademark application based on a likelihood of confusion and false suggestion of a connection with their trademark registration.

The Trademark Trial and Appeal Board (TTAB) will assess whether Walmart’s earlier registration for the logo is likely to confuse a customer into mistakenly believing that the products from Walmart and Kanye are from the same source.

Comparing Trademarks

During evaluation, the TTAB will mainly look at the similarity of the marks and the similarity of the goods and services of both trademark owners:

• Similarity of the marks – Kanye’s logo consists 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. Walmart’s logo has only six thicker and straight lines. The marks are not identical, but you can’t deny that those marks look very similar

• Similarity of goods and services – To casual observers, it might be difficult to see how anyone can confuse Walmart’s products with the products from the famous rapper Kanye West. However, the TTAB will only compare the goods and services that are mentioned in the respective registration/application and their potential uses. They will not look at how they are actually used. Since there is certainly some overlap between the goods and service (clothing, retail store services), this does not work in Kanye’s favour.

Will Kanye West lose his trademark for his new logo to Walmart?

Kanye might very well lose this opposition and in that case he will not be able to get a trademark registration and use the his proposed logo on his Yeezy line.

He might benefit from an agreement or cooperation with Walmart regarding the use of the trademark so they can co-exist. Apparently, Walmart has previously reached out to Kanye West several times regarding planned use and possibly cooperating in order to find common ground.

A proper search may have helped Kanye avoid this dispute. We can help with that. Stratford Intellectual Property works with businesses of all sizes to develop trademark strategies that are tailored to their business needs. We offer a full suite of trademark services, including searching, monitoring and opposition proceedings.

About Kim: A registered trademark agent in Canada, Kim is an IP Specialist with a unique combination of skills, education, and assets with a drive for success and a passion for Intellectual Property. Working with growing organizations for many years she’s honed her ability to be both creative and strategic with IP solutions and strategy implementation plans.

She specializes in IP analytics and Trademark Strategy and Prosecution. Before becoming an IP specialist at Stratford, she practiced law in Belgium for 5 years. Kim holds an LLB and LLM in law from Belgium and followed trademark studies at McGill University. 

To connect with Kim, send her an email or follow her on LinkedIn.