Fishy Designs? Patagonia Sues for Trademark Infringement of its P-6 Trout Logo
On October 6th, 2022, Patagonia, Inc. (“Patagonia”) filed a trademark infringement lawsuit against Walmart Inc. (“Walmart”) and Robin Ruth USA (“Robin Ruth”) in the Central District of California.[1] Patagonia alleges that Robin Ruth manufactured and sold shirts with a design that is “almost identical” to Patagonia’s P-6 Trout logo and design.[2] Walmart then purchased, advertised and resold these “copycat products” in their retail stores.[3]
Background on the Parties
In the past fifty years, Patagonia has become a world-renowned retailer of high-quality outdoor apparel, accessories and active sportswear.[4] The brand has also emerged as a leader in sustainability and environmental efforts through its numerous initiatives, such as the Worn Wear Program and 1% for the Planet.[5] These efforts have earned Patagonia multiple accolades, including the Sustainable Business Counsel’s first “Lifetime Achievement Award.”[6]
Since the 1970s, Patagonia has used its unique brand logo: “a multi-colored label inspired by a silhouette of the jagged peaks of the Mt. Fitz Roy skyline” (the “P-6 logo”).[7] In the early 2010s, Patagonia created and has since used a variation of the P-6 logo that displayed the P-6 logo on a trout fish (the “P-6 Trout logo”).[8] These logos, depicted in Images A and B, are identifiable by consumers around the world as “signifying high quality products made by a responsible company.”[9]
Image A: P-6 Logo[10]
Image B: P-6 Trout Logo[11]
Walmart, one of the world’s largest corporations, operates retail stores and supermarkets throughout the country as well as an e-commerce site.[12] One of Walmart’s clothing suppliers is Robin Ruth, an international casual apparel brand that was founded in 2002.[13]
Establishing a Trademark Infringement Claim
A trademark is a word, logo or symbol that differentiates products in the marketplace and represents the “commercial substitute for one’s signature.”[14] Trademarks function to indicate ownership, guarantee consistent quality, and advertise a brand.[15] To receive federal protection under the Trademark Act of 1946 (commonly referred to as the Lanham Act), a trademark must be (1) unique, (2) associated with a product or service in the marketplace, and (3) registered with the U.S. Patent and Trademark Office.[16]
To establish a trademark infringement claim under the Lanham Act, Patagonia must demonstrate that (a) it has a valid and legally protectable trademark; (b) Walmart and Robin Ruth used an identical or similar trademark in commerce without Patagonia’s consent; and (c) Walmart’s and Robin Ruth’s use of the trademark causes a likelihood of confusion (“elements (a)–(c)”).[17] A likelihood of confusion is caused when “consumers viewing the mark would probably assume that the product or service it represents is associated with the source of a different product or service identified by a similar mark.”[18] When determining whether a likelihood of confusion exists, courts look to a variety of factors, such as the similarities between the marks, the defendant’s intent, and evidence of actual confusion.[19].
Patagonia’s Trademark Infringement Claim
Patagonia argues that it has a valid and legally protectable trademark (element (a)) because Patagonia owns registered trademarks that were issued by the U.S. Patent and Trademark Office for both its P-6 logo and P-6 Trout logo.[20]
Patagonia also asserts that Walmart and Robin Ruth used a similar trademark in commerce without Patagonia’s consent (element (b)).[21] Although Patagonia did not authorize the use of the logos, Robin Ruth designed, manufactured and sold shirts (photographed in Image C) with a design that is similar to its P-6 Trout logo.[22] Walmart then purchased these shirts from Robin Ruth and resold the shirts in its retail stores.[23]
Image C: Shirt with the Alleged Similarity to Patagonia’s P-6 Trout Logo[24]
To illustrate the similarity between the marks, Patagonia argues that the design on the shirt is “nearly identical” to the P-6 Trout logo and P-6 logo.[25] Similar to the P-6 Trout logo, the shirt’s design features an outline of a trout fish that displays the silhouette of the Mt. Fitz Roy skyline with a multi-colored sky above.[26] The only difference between this design and Patagonia’s logos is the lettering. The shirt’s design includes “MONTANA” below the fish instead of “PATAGONIA” on the mountain silhouette in the P-6 logo.[27]
To demonstrate that Walmart’s and Robin Ruth’s use of the trademark causes a likelihood of confusion (element (c)), Patagonia alleges that the substantial similarity between the marks “inevitably will imply to consumers that Patagonia has endorsed or authorized these products. . . or is somehow affiliated with the Defendants.”[28] Patagonia further argues that Walmart and Robin Ruth intended to confuse consumers because they profited from the nearly identical marks and chose to continue to sell the shirts despite receiving cease and desist letters from Patagonia.[29]
In addition to the trademark infringement claim, Patagonia filed federal and state claims for unfair competition, dilution of a famous mark, and copyright infringement against Walmart and Robin Ruth.[30]
Patagonia is demanding a jury trial and seeking a variety of remedies, including payment of the profits that Walmart and Robin Ruth earned from the design and an injunction that prohibits Walmart and Robin Ruth from continuing to use the design.[31]
Walmart’s Response to Patagonia’s Trademark Infringement Claim
On December 12th, 2022, Walmart filed an answer to Patagonia’s complaint.[32] Walmart admits to “selling items that look like the item depicted in” Image C but denies every other allegation.[33].
Walmart also raised numerous affirmative defenses.[34]. Walmart argues that Patagonia did not support the allegations with enough facts to constitute a cause of action.[35]. Even if Patagonia does state facts sufficient to constitute a cause of action, Walmart further argues that its use of the design is protected because the usage constitutes fair use, and the shirts are an “expressive work” under the First Amendment.[36].
Robin Ruth has not yet responded to Patagonia’s claims. The parties will likely discuss next steps at a conference that is scheduled for March 3, 2023.[37]
Footnotes
