Walmart had a curious argument in response to a California federal court’s preliminary injunction Thursday on the more than two dozen sneakers it makes that Vans alleges infringe on its trademarks.
The district court judge ruled that Vans had demonstrated it is “likely to establish on the merits” that the allegedly infringing styles are “likely to cause confusion” with the skate brand’s trademarked Old Skool, SK8-Hi and Old Skool toddler designs. Furthermore, he decided, “Vans is likely to suffer irreparable harm absent injunctive relief.”
Vans originally filed its complaint against Walmart in November. The suit identified more than 20 “blatant knockoff versions of Vans shoes” and alleged trademark infringement, unfair competition and false designation of origin.
The skate brand highlighted multiple similarities between Walmart’s shoes and its own Old Skool and Sk8-Hi sneakers. In both cases, it took issue with the use of a decorative design that it claimed imitated its own side-stripe trademark. Though Walmart’s design is ultimately different—it turns sharply at the front-end of the shoe and ends at the sidewall—the brand insisted that it was confusingly similar and that it “copies at least two-thirds” of its own mark. When defending its shoes, Walmart argued that the side design looked “nothing like” Vans’ side-stripe mark.
The district court judge sided with Vans. In his order last week, he described the similarities as “unmistakable,” noting that Walmart’s stripe shared the “exact sizing and placement” of Vans’ mark, with the only difference being the extended segment. “Given the many other strong similarities between Walmart’s shoes and Vans’ Old Skool besides their side stripes, the minor difference in the side stripe markings does not counter the overall impression of similarity between the shoes,” he wrote in his opinion.
Walmart tried to argue against “a likelihood of confusion” on several other fronts, including by disputing the commercial strength of Vans’ side-stripe mark, and suggesting the surveys submitted by Vans to demonstrate actual confusion were biased. In the end, however, the judge decided that of the seven relevant factors to determine a likelihood of confusion, all weighed in the skate brand’s favor.
Furthermore, the judge concluded that “Vans’ evidence of loss of market control, consumer confusion, and the poor quality of Walmart’s shoes” were sufficient to establish that Vans would likely “suffer irreparable harm absent injunctive relief.”
The court further agreed with Vans that the only financial harm Walmart would suffer from a preliminary injunction would be lost profits from the sale of the allegedly infringing goods, as well as costs associated with their removal from stores. Walmart attempted to argue at the hearing that it would also have to incinerate the existing inventory because its shoes would “disintegrate” if kept in storage for the duration of the litigation. The judge dismissed this concern noting that “that result comes not from any action by Vans or this court, but from Walmart’s self-described low quality of shoes.”
The court’s injunction ultimately banned the sale and distribution of 28 Walmart sneakers, including styles from its Time and Tru, Wonder Nation and No Boundaries brands.
“We are reviewing the order and considering our options,” a Walmart spokesperson said. “We plan to continue defending the company.”
Vans is not the only footwear brand to sue Walmart for trademark infringement. In July, Crocs sued Walmart—and a range of other retailers, including Loeffler Randall and Hobby Lobby—for trademark infringement and unfair competition, among other things. In June, Yeezy, the popular footwear brand run by Ye—the Grammy-winning artist commonly known as Kanye West—filed an unfair competition complaint against Walmart for hosting a “cheap knock-off” of its popular Foam Runner clog. In 2020, Ugg accused the retailer of trade dress infringement and unfair competition for selling footwear it alleged was “confusingly similar” to its own Fluff Yeah slides.
Patagonia sues internet troll’s apparel business
Elsewhere in California, Patagonia filed its own trademark infringement suit late last month against a group of LLCs doing business as Linda Finegold.
The outdoor brand’s complaint, which also alleges unfair competition, dilution and copyright infringement, targets a line of products that recreated Patagonia’s mountainside logo—it appeared to copy and then mirror the design—but replaced the brand’s word mark with the phrase “patagof***yourself.” Underneath, the e-commerce site had printed its trademarked phrase “a**holes live forever.” The site lindafinegold.com sold shirts, hoodies, sweatpants and hats with the design.
In its complaint, Patagonia said Linda Finegold told it on Jan. 13 and on March 1 that it had ceased selling the allegedly infringing products. On March 14, it learned that the site was continuing to sell the products via a “S*** We Are Not Legally Allowed to Show You” “mystery box.” According to Patagonia, the site promoted that box on its now-private Instagram. Patagonia said it had relied on assurances that the site had stopped selling the products when it decided against filing its complaint sooner.
Patagonia argued that the designs have and will cause it “irreparable harm” and that unless the court restrained Linda Finegold, the e-commerce business would “continue expanding its illegal activities.” It asked the court to compel the site to turn over its entire inventory of allegedly infringing products and prohibit it from producing, selling and promoting any goods or services that resemble its protected trademarks.
Linda Finegold, a likely fictional character, is presented as the business associate of Kirill Bichutsky, the controversial photographer and event organizer who acts as the face of lindafinegold.com. A day after Patagonia filed its lawsuit, Bichutsky’s friends promoted a hoax that that he had died. For several days, a note published to the site’s front page—supposedly written by Linda Finegold—promoted the ruse. The business offered a steep sitewide discount as it pretended that Bichutsky was dead, ostensibly because the store was to shut down in his absence.
Bichutsky’s store is also known by its slogan “A**holes Live Forever” or the abbreviation ALF. It sells a broad range of mostly profane apparel. Its lineup includes a selection of pieces that appear to riff on the logos of other famous brands, including Gap, Shell and Monopoly, similar to Mschf’s