Walmart Loses Lengthy Trademark Infringement Lawsuit

"Walmart's Backyard Grill mark at the center of trademark infringement lawsuit"

Walmart’s recent trademark infringement lawsuit loss demonstrates the importance of trademark owners understanding their branding risk tolerance during the naming stage. In this case, Walmart had a high branding risk tolerance that will likely end up costing it millions of dollars.

In about 2011, Walmart Stores went down the path of launching a new line of barbecue products. The new mark it decided to adopt was BACKYARD GRILL. According to the most recent decision from the U.S. District Court for the Eastern District of North Carolina, Walmart instructed its trademark attorneys to conduct a trademark clearance search for this new mark. It’s trademark attorneys warned Walmart of a potential conflict with a prior registered mark THE BACKYARD (in standard characters) for “retail store services in the field of lawn and garden equipment and supplies” owned by Variety Stores, Inc.

Walmart made the decision not to follow its trademark attorney’s advice and filed an intent-to-use trademark application for:

Mark Image

in connection with a variety of goods and services including “barbecues and grills” and “retail store services featuring a wide variety of consumer goods of others.” With such a broad identification of goods and services descriptions, Variety Stores’ THE BACKYARD mark should have been cited against the registration of Walmart’s pending application. Surprisingly, Walmart’s BACKYARD GRILL mark sailed through the examination phase and was published for opposition where Variety Stores promptly opposed its registration.

The dispute did not stop there, nor did it deter Walmart’s plans to use the BACKYARD GRILL mark. A little over three years after the opposition proceeding commenced, it was suspended for a lawsuit filed by Variety Stores against Walmart alleging trademark infringement.

In 2016, Walmart lost the lawsuit and was ordered to pay Variety Stores $32.5 million dollars. This amount was a disgorgement of the profit Walmart had earned on its BACKYARD GRILL products. However, this award was reversed by the Fourth Circuit Court of Appeals on the ground that the case should have gone to the jury. The case was retried in front of a jury in October 2018 and the jury found that Walmart willfully infringed Variety Stores’ THE BACKYARD trademark. Now the case moves into further proceedings to determine Variety Stores’ monetary compensation.

BOB’S Take on the Seattle NHL Team Name

"Welcome sign to Seattle NHL team"

The National Hockey League recently announced the addition of a new team in Seattle, WA bringing the total number of teams in the league to 32. This is an exciting time for hockey fans, but also an exciting time for namers and trademark searchers. Shortly after the announcement of the new team in Seattle, the speculation began about the new team name. It did not take long for the list of prospective names to be leaked and for Vegas to start putting odds on which team name will emerge victorious. 

Here is the list of prospective names:

Vegas believes the EMERALDS is the odd on favorite to be the name of the new hockey club. Being the inquisitive trademark searchers that we are, we want to know what BOB thinks the name should be. We used BOB’s patent pending, multiname search functionality to conduct the search. 

First, we downloaded the Sample Excel Worksheet. Next, we entered the proposed names under the “Mark” column. In the “Wild Card” column, we used the truncation symbols we believe will result in a broad enough search to uncover any potential conflicts with the proposed names.

We saved the Excel Worksheet to our desktop and went back to BOB’s website. There, we uploaded the Excel Worksheet and selected a goods and services description. 

We chose “Entertainment Services” because a hockey game is entertainment and we want to know about other entertainment services that may have names similar to the names the new Seattle franchise is interested in. It is always a good idea to use a broad description of goods or services in a trademark search. You can’t eliminate marks from the results as not being concerning if you don’t find them in the first place.  

Finally, we entered our email address – bob@trademarkbob.com – and clicked “Import.” We received a message that our list was uploaded, the 13 credits were deducted from our account, and within minutes the results were in our in-box. 

What we learned is that there is a crowded field for every mark being considered by the Seattle franchise except for TOTEMS. In other words, there are other entertainment services being offered in connection with the entire proposed name or a portion of the proposed name. And because none of these marks are for “entertainment services, namely, hockey games,” Seattle franchise should be safe to adopt anyone of them.