By: Melissa D. Goolsarran Ramnauth, Esq. | MDGR LAW | Trial-Winning Trademark Firm
Images from USPTO TSDR
Someone wouldn’t normally associate Kanye West with Walmart. The two seem like completely different brands. Their customers might overlap but those customers would not confuse one for the other. Walmart, though, doesn’t seem to agree with that notion. Walmart recently opposed Kanye West’s latest trademark application for a logo design on the grounds that Kanye’s sun design was too similar to Walmart’s sun design. They are seeking to have Kanye’s trademark application rejected.
A trademark is basically a word, phrase, symbol, or design, or a combination, that identifies a brand or the source of goods/services. Trademark technically refers to a good, while service mark refers to a service, but the phrases are used interchangeably. An applicant files a trademark application with the United States Patent & Trademark Office. The USPTO then assigns an examiner to review the application. The examiner reviews prior registrations to make sure that the pending application is not too similar to another registration. Depending on the review, the examiner either puts the application through to publication (if the examiner feels that there are no conflicts) or issues an office action (requiring the applicant to explain why their mark is not too similar to another mark or amend their application).
In this case, the examiner determined that the application was fit to proceed to the publication period. And that is when Walmart filed its opposition. A brief look back at how the two parties developed their global brands might shed light on the potential outcome.
Kanye Omari West was born on June 8, 1977 in Atlanta, Georgia to Ray and Donda. West’s father was a photojournalist for the Atlanta Journal newspaper and his mom was a professor, and eventually, her son's manager. His mother raised him in Chicago after his parents divorced. South Side’s hip-hop scenes were appealing to West. He also won a scholarship to attend Chicago's American Academy of Art after graduating from Polaris High School. However, West dropped out of college and pursued music. He got his big break handling the production for the Jay-Z’s track This Can't Be Life, after her moved to New York in 2001. In 2004, he released College Dropout. It sold 2.6 million copies. After many successful albums, West then ventured into fashion. He interned at Gap in 2009. In 2011, he launched his first collection in Paris which received lukewarm reception. In 2013, he partnered with the French label APC, and in October 2015, he signed a $10 million contract with Adidas.
Walmart is a multinational supermarket company that owns a chain of hypermarkets, discount department stores, and grocery stores. It was founded by Sam Walton in 1962 in Rogers, Arkansas. Walton’s idea was to have a successful business built around offering lower prices and great service. Walton was driven to bring greater opportunity and value to his customers. He earned the Presidential Medal of Freedom, awarded by President George H. W. Bush in 1992. Walton passed away in 1992, however, Walmart continues to expand. Walmart’s dominating presence and large work force has been the subject of controversy centered around the minimum pay for its workers.
On April 21, 2021, Walmart filed its trademark opposition against Kanye’s design logo, on the grounds that consumers would be confused with the logo and associate the Yeezy symbol with Walmart, thus giving Kanye West’s product a free ride on Walmart’s reputation. Walmart’s logo has thick lines that look like sun rays while Kayne’s Yeezy's proposed logo has eight dotted lines emanating from a circle that also resemble sunlight. The sun-like logo has been used by Walmart since 2007, and Yeezy submitted documents for its proposed logo in January 2020.
The Trademark Trial and Appeal Board has issued deadlines for both parties. At this time, Yeezy's response to the opposition is due on May 31, 2021, and then both parties will engage in discovery prior to trial.
Below is a portion of the relevant authority regarding trademark oppositions. You may rely on the Trademark Trial and Appeal Board Manual of Procedure for more opposition procedures, or you can contact MDGR LAW | Trial-Winning Trademark Firm at melissa@mdgrlaw.com or (754) 800-4481.
15 U.S.C. § 1063(a) [Trademark Act § 13(a)] Any person who believes that he would be damaged by the registration of a mark upon the principal register, including the registration of any mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may, upon payment of the prescribed fee, file an opposition in the Patent and Trademark Office, stating the grounds therefor, within thirty days after the publication under subsection (a) of section 1062 of this title of the mark sought to be registered.
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15 U.S.C. § 1064 [Trademark Act § 14] A petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed as follows by any person who believes that he is or will be damaged, including as a result of a likelihood of dilution by blurring or dilution by tarnishment under section 1125(c) of this title, by the registration of a mark on the principal register established by this chapter, or under the Act of March 3, 1881, or the Act of February 20, 1905.
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15 U.S.C. § 1092 [Trademark Act § 24] Marks for the supplemental register shall not be published for or be subject to opposition, but shall be published on registration in the Official Gazette of the Patent and Trademark Office. Whenever any person believes that such person is or will be damaged by the registration of a mark on the supplemental register--
· (1) for which the effective filing date is after the date on which such person’s mark became famous and which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title; or
· (2) on grounds other than dilution by blurring or dilution by tarnishment, such person may at any time, upon payment of the prescribed fee and the filing of a petition stating the ground therefor, apply to the Director to cancel such registration.
15 U.S.C. § 1127 [Trademark Act § 45] In the construction of this chapter, unless the contrary is plainly apparent from the context--
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Person, Juristic Person. The term "person" and any other word or term used to designate the applicant or other entitled to a benefit or privilege or rendered liable under the provisions of this Act includes a juristic person as well as a natural person. The term "juristic person" includes a firm, corporation, union, association, or other organization capable of suing and being sued in a court of law.
The term "person" also includes the United States, any agency or instrumentality thereof, or any individual, firm, or corporation acting for the United States and with the authorization and consent of the United States. The United States, any agency or instrumentality thereof, and any individual, firm, or corporation acting for the United States and with the authorization and consent of the United States, shall be subject to the provisions of this chapter in the same manner and to the same extent as any non-governmental entity.
The term "person" also includes any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his or her official capacity. Any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this Act in the same manner and to the same extent as any non-governmental entity.
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37 C.F.R. § 2.2(b) Entity as used in this part includes both natural and juristic persons.
37 C.F.R. § 2.101(b) Any person who believes that he, she or it would be damaged by the registration of a mark on the Principal Register may file an opposition addressed to the Trademark Trial and Appeal Board. …
37 C.F.R. § 2.111(b) Any person who believes that he, she or it is or will be damaged by a registration may file a petition, addressed to the Trademark Trial and Appeal Board, for cancellation of the registration in whole or in part. ...
The term "damage," as used in Trademark Act § 13 and Trademark Act § 14, 15 U.S.C. § 1063 and 15 U.S.C. § 1064, concerns specifically a party’s standing to file an opposition or a petition to cancel, respectively. [ Note 1.] A party may establish its standing to oppose or to petition to cancel by showing that it has a "real interest" in the case, that is, a legitimate personal interest in the outcome of the proceeding and a reasonable basis for its belief in damage. [ Note 2.] See TBMP § 309.03(b).To plead a "real interest," plaintiff must allege a "direct and personal stake" in the outcome of the proceeding. [ Note 3.] There is no requirement that a plaintiff show a personal interest in the proceeding different from or "beyond that of the general public" in order to establish standing. [ Note 4.] There is also no requirement that actual damage be pleaded or proved in order to establish standing or to prevail in an opposition or cancellation proceeding. [ Note 5.] However, the allegations in support of plaintiff’s belief of damage must have a "reasonable basis in fact." [ Note 6.]
For a discussion of standing, see TBMP § 309.03(b).
Research assistance by Darshani Bacchus.