In January of last year, Yeezy first submitted an application for a sun-shaped service mark featuring eight radiating rays made up of a series of dots. The application was published in late December, opening it up to challenges from affected parties. Last Wednesday, Walmart lodged an official objection to the use of the symbol with the U.S. Patent and Trademark Office, stating that the design “is likely to cause confusion and lead to consumer deception,” given its resemblance to the company’s six-pronged flare emblem.
The Arkansas-based retail chain first began using its widely recognized logo across its stores and its e-commerce sites in 2007. “[Walmart] is the world’s largest retailer with more than 5,000 stores in the United States, the United States’ largest grocery retailer, and the largest private employer in the United States,” Walmart Apollo, LLC—the company’s legal arm—wrote in its complaint, adding that its sunburst mark has “become well known and famous as a distinctive indicator of the origin of [Walmart’s] goods and services and a symbol of [Walmart’s] goodwill.”
Yeezy’s team noted in its application that the insignia could be used to market a vast array of products, ranging from apparel items like T-shirts, track suits, sports jackets and underwear to “metal modular homes,” magazines and other publications, musical recordings, retail store services, websites, hotels and a multitude of other applications.
Walmart has taken umbrage with the requested patent’s use in all these forms, stemming from concerns that Yeezy’s proposed usage would create a “false suggestion of a connection” with the Walmart brand. The company also based its opposition on a belief that Yeezy possesses “no bona fide intent to use mark in commerce for identified goods or services,” hundreds of which were listed on the application. “The goods and services contained in Applicant’s Trademark Application are exceedingly numerous,” it said.
What’s more, Walmart alleged that the goods and services Yeezy listed on its application “are related to or directly overlapping with goods and services” covered by Walmart’s own trademark, referring to clothing, electronics, and products co-branded or endorsed by celebrities, from music to entertainment.
Walmart has used the symbol “in commerce on various articles of clothing which are highly related and directly overlapping with the Class 25 goods identified in Applicant’s Trademark Application,” and has promoted and sold such goods in commerce” prior to Yeezy’s trademark application, the company wrote. “The likelihood of confusion” between the marks “is aggravated by the fact” that Walmart often partners with notable pop culture figures and references “to create special lines of products and services,” it added—including West’s soon-to-be ex-sisters-in-law Kendall and Kylie Jenner.
“Upon information and belief, Applicant is associated with Mr. Kanye West, a recording artist, record producer, fashion designer, and former candidate for President of the United States,” the company wrote, emphasizing West’s own celebrity as a factor in its opposition. If Yeezy were granted registration for its proposed mark, Walmart wrote, the brand would thereby obtain “prima facie”—or assumed—rights to the use of Walmart’s logo.
“Opposer respectfully requests the registration of Applicant’s Mark be refused and this opposition be sustained,” Walmart wrote. According to the U.S. Patent and Trademark Office, the matter has “not yet been decided,” but a response from the agency is due on May 31.