26 January 2022TrademarksAlex Baldwin

Walmart tries to block Vans’ shoe injunction bid

Walmart has asked a California court to deny shoemaker Vans’ request to block sales of the supermarket giant’s own-brand shoes that it claims infringes its designs.

Vans hit Walmart with a trademark infringement suit in November last year, claiming that the retail giant ripped off designs of more than 20 pairs of shoes.

The complaint alleged that Walmart had embarked on a campaign to copy “virtually all of Vans’ best selling shoes”, including its “Checkerboard Slip-On”, “SK8-HI” and “Old Skool” models and requested that Walmart’s shoes be taken off shelves.

The retail giant claimed that this would result in “significant tangible harm” to Walmart in a redacted response filed to the US District Court for the Central District of California on January 24.

It held that it would suffer “tremendous losses” from withdrawing the shoes from US shelves, which it estimates to be valued at at least $1.4 million.

If the court decides to issue a preliminary injunction barring the sale of Walmart’s shoes, Walmart has requested that a “very significant” bond of approximately $30 million must also be issued to cover the costs and damages sustained by lost sales if Walmart was found to be wrongfully enjoined.

Walmart also contends that Vans had failed to show how Walmart’s sneakers would cause “irreparable harm” to the skate shoe company.

As evidence, Walmart pointed to the delay in Walmart’s shoes hitting store shelves and Vans filing the preliminary injunction request.

According to Walmart, Vans’ request came 18 months after Walmart began selling the shoes, nine months after Vans had engaged in communications with Walmart about the shoes, and one month after it submitted its initial complaint.

“Vans is not losing sales and its reputation is not being diminished. Vans is not suffering any irreparable harm,” Walmart said.

Not-so ‘unique’

Walmart also claimed that many of the features of Vans’ trade dress were “wholly unprotectable”.

It pointed towards common design elements of Vans’ shoes such as a “rubberised sidewall”, “textured toe box” and “visible stitching”, claiming that these were common components of many other skate shoe models from similar brands such as Etnies, Lakai, and DC.

It also argued that the only distinctive aspects of the sneakers are the Vans logo and the “side stripe mark”, which Walmart did not feature on any of its sneakers.

‘Biased’ survey

To support its preliminary injunction motion, Vans submitted four surveys that pitted two of Walmart’s shoe models against its own.

Two of the surveys focused on determining whether the Vans shoes have acquired “secondary meaning”—when consumers come to identify a trademark with a certain product over a period of time—and  the other two were to gauge the potential likelihood of confusion from consumers.

Walmart held that the “secondary meaning” surveys introduced bias into its respondents by referring to the products as “skate shoes” rather than simply shoes or sneakers.

Specifically, question 1 of the survey asked respondents whether they associated the design and appearance of “skate shoes” pictured with a particular company. Walmart claims that this wording caused respondents to merely name the “top of mind” brand that sells skate shoes rather than considering all sneaker manufacturers.

Addressing Vans’ likelihood of confusion surveys, Walmart noted that the survey’s focus on “post-sale confusion” ignored that the disputed shoes would only be sold in Walmart stores and feature a sizable “Wonder Nation” hanger tag— a registered trademark of Walmart.

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