Vans, Inc. and VF Outdoor, LLC. v Walmart, Inc. et al., Case No. 8:21-cv-01876-DOC-KES
Vans Inc. has convinced a California federal court to block sales of Walmart Inc. shoes that allegedly copy its designs during the duration of their trademark infringement litigation. In a complaint filed in California federal court, Vans claimed that Walmart was selling over 20 shoes that infringed on the skate brand’s property rights. The suit accuses Walmart of trademark infringement, unfair competition and false designation of origin. According to the suit, Walmart “flooded the market with cheap, low-quality, and confusingly similar shoes that harm Vans’ goodwill and reputation.” Vans pointed to examples of Walmart sneaker designs that closely resemble products from Vans, including the Old Skool and SK8-HI shoes.
AMS Survey Expert Brian Sowers designed and conducted four consumer surveys on behalf on Vans. Two surveys tested whether the asserted trademark and trade dress for the Vans Old Skool and Sk8-Hi skate shoes have acquired secondary meaning. The results of the surveys demonstrated that the asserted trademarks and trade dress for the Vans skate shoes have acquired secondary meaning.
The other two surveys tested the likelihood of post-sale confusion caused by Walmart’s No Boundaries Low-Top and High-Top skate shoes which Vans alleges is confusingly similar to its Old Skool skate shoe. The results of the likelihood of confusion surveys demonstrated that the Walmart shoes are likely to cause post-sale confusion with Vans.
In granting Vans’ motion for preliminary injunction, the court wrote that:
Sowers conducted secondary meaning surveys for the Old Skool and the SK8-Hi, finding a net secondary meaning level of 39.4% for each of the designs. This finding falls within the range that courts have found to be sufficient to support secondary meaning. When combined with the other evidence of secondary meaning provided by Vans, the survey evidence corroborates Vans’ argument.
Additionally, with respect to the likelihood of confusion, the court wrote that,
Vans also submitted evidence of actual confusion in the form of survey evidence, which shows that Walmart’s No Boundaries low-top and high-top shoes create a likelihood of confusion among consumers “likely to purchase skate shoes (i.e., shoes designed for skateboarding but also used for everyday casual wear) or to have someone purchase skate shoes for them in the next 6 months.” A substantial portion of prospective purchasers (23.2% for the low-tops; 29.8% for the high-tops) believed that Walmart’s shoes were either made or authorized by Vans. These findings are sufficient to support a finding of actual confusion …. This Court finds that Vans’ survey provides evidence from which a reasonable jury could conclude that approximately one quarter of those who encounter Walmart’s allegedly infringing shoes will be confused about the origin of those shoes.
In issuing the opinion, the court said that Vans would likely be issued a win in its case against Walmart and that the company would “suffer irreparable harm” without an injunction.
To learn more about Applied Marketing Science, Brian Sowers, secondary meaning surveys, or likelihood confusion surveys please contact us.
