After nearly two years, Vans and Walmart have settled their long-running dispute.
This settlement marks the end of a hefty dispute that was filed on 15 November 2021 by Vans against Walmart, Inc., The Doll Maker, LLC, and Trendy Trading, LLC (“the Complaint”). Vans filed the Complaint against the parties for allegedly selling over 20 pairs of shoes that they believed infringed their IP rights.
The Complaint was based on:
- Trademark infringement (15 USC § 1114);
- Unfair competition and false designation of origin (15 USC § 1125(a));
- Contributory Trademark Infringement, Unfair Competition, and False Designation of Origin (15 USC §§ 1114 and 1125(a)) (against Walmart only);
- State Unfair Competition (§17200, et seq.); and
- Common Law Trademark Infringement and Unfair Competition.
Walmart argued that the common elements in the shoes were already used by several footwear brands, but this did not sway the judge. A preliminary injunction against Walmart, rendering Walmart unable to make, market, or sell any footwear bearing Vans’ trademarks was issued. In the injunction decision, the judge referred to a tweet from Walmart that stated: “We do not have Vans. Would you mind a shoe similar to the Vans? ~Walmart Elves” — evidence that proves Walmart was aware of Vans and had set out to create a lookalike style that could be sold as a competitive alternative.
Although the injunction had effect from 22 July 2022, Vans accused Walmart of ignoring it and “doubling down on its counterfeiting scheme by introducing a new model of shoe.” Vans requested the court issue an Order to Show Cause re: Civil Contempt and Sanctions and to issue a coercive sanction preventing Walmart from violating the injunction further. However, this was rejected.
Emma Day and Harriet Berridge explain the case in more detail in an article for The Trademark Lawyer. You can read the full article here.
