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Analyze the possible infringement of Mattel's word  trademarks in BARBIE by the cover of the book originally entitled ADIÓS, BARBIE : YOUNG WOMEN WRITE ABOUT BODY IMAGE AND IDENTITY.  Make sure to reference all four infringement cases in the casebook.

To answer this question thoroughly, you may also search the USPTO TESS database for Mattel's registered word marks

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Relying on the four Supreme Court cases on non-traditional marks, analyze the following example:

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Why do pomegranates make so many "cameos" throughout history? From Mesopotamia to the Renaissance to modern-day-artists, civilizations, religions, and scientists have had an 8,000-year love affair with this fascinating fruit.

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Ruby red and a whole lot of healthy. Discover the polyphenol antioxidant power of POM Wonderful.

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Pursuant 1114(1)(a), the owner of a registered trademark may bring civil action if their trademark is (i)  used use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale of any goods, and (ii) such use is likely to cause confusion, or to cause mistake, or to deceive. The Act does not provide details on what would be a sufficient confusion to constitute infringement.

1. Mattel, as an owner of the registered trademark "Barbie" and many other registered trademarks containing the word "Barbie", can bring an infringement claim against Adios under section 32 of the Lanham Act.

Mattel can base their action on the following: (i) that the book cover in question displays a toy leg, resembling Barbie leg, and Barbie's accessories such as a comb, necklace, a dress, and a high-heel shoe; and Adios used and imitated Mattel's marks in connection with the sale of Adios book. Indeed, if you look at the images on the cover, they are extremely similar to Mattel toys, but stylized in red color. In addition, the word 'Barbie' in the title is colored in pink resembling Barbie Pink color trade dress. Since 1960s, Mattel registered and maintained a huge amount of Barbie trademarks in wide range of goods and services, including magazine for teenagers and children series of books, jewelry, play vanity sets, toy clothes, and name Barbie itself.

1. Next thing, Mattel needs to prove that Adios' use of the trademarks is likely to cause confusion, or to cause mistake, or to deceive.

Courts use a general 8-factor (though set of factors may slightly vary depending on jurisdiction and case-by-case basis) test to determine likelihood of confusion.

For example, in Kellogg, the 6th Circuit likelihood of confusion test was based on Daddy’s Junky Music Store case: (1) the strength of the plaintiff’s mark; (2) the relatedness of the goods or services offered by the parties; (3) similarity of the marks; (4) any evidence of actual confusion; (5) the marketing channels used by the parties; (6) the probable degree of purchaser care and sophistication; (7) the defendant’s intent; and (8) the likelihood of either party expanding its product line using the marks. The court found the first three factors central to determining likelihood of confusion and dismissed the rest of the test factors.

In Hendrix, the 9th Circuit likelihood of confusion test was similar to the 6th Circuit test but based on a different case (Sleekcraft test). However, in Hendrix the court found the intent of defendants the most probative Sleekcraft factor.

Courts are not mandated to examine all of the 8 factors of the test; on the contrary, judges are advised to "instruct only on the factors that are relevant in the particular case presented to the jury". "…it is often possible to reach a conclusion with respect to likelihood of confusion after considering only a subset of the [Sleekcraft factors, which do] not purport to be exhaustive, and non-listed variations may often be quite important". Brookfield Commc’ns. "Because each factor [of eight-factor Sleekcraft test] is not necessarily relevant to every case, this list functions as a guide and is ‘neither exhaustive nor exclusive." Metro Pub.

Applying the 8-factor test to Mattel/Adios matter, the court would need to decide on:

(1) the strength of the plaintiff’s mark. Barbie, Barbie accessories, and Barbie Pink are very strong trademarks/trade-dress. An average consumer will most likely associate the accessories and the word Barbie with Mattel's Barbie.

(2) the relatedness of the goods or services offered by the parties. Mattel can argue that the goods offered by Mattel and Adios can overlap (magazines, books, etc.)

(3) similarity of the marks. Mattel can state that the marks are very similar - basically photoshopped pictures of actual Barbie items that create impression similar to Mattel's marks. I am not sure about Barbie Pink - the Adios 'Barbie' color does not look like 'Barbie Pink' to me.

(4) any evidence of actual confusion. This is tough one. The parties should present evidence in form of surveys, feedback from customers or distributors/resellers, etc. showing confusion (like emails in Hendrix), sales numbers, or any other evidence to prove actual confusion. However, courts are instructed that actual confusion is not required for a finding of likelihood of confusion. Sometimes, just a likelihood to cause confusion can be enough. Mattel can prevail in this argument as well.

(5) the marketing channels used by the parties. I think Mattel will have hard time proving that their Barbie products and Adios book can be sold in the same stores or advertised in the same manner. Adios is an independent small number published feminist and women empowering book. The parties' target audience is very different. The market is different as well.

(6) the probable degree of purchaser care and sophistication. The determination depends on how savvy the customers are and how expensive the goods are. I think an average person may be not sophisticated enough to tell the difference and may be confused thinking that a book with Barbie word in pink in the title and Barbie's stuff on the cover is Mattel's product.

(7) the defendant’s intent. I think this is the most interesting, and should be the most probative, factor. Adios' intent definitely was not to gain profit and take advantage of Mattel's Barbie brand and trademarks. Neither Adios attempted to deceive, cause confusion or mistake. Adios should have argued trademark fair use!!! Just like Aqua did in Mattel, Inc. v. MCA Records!!

(8) the likelihood of either party expanding its product line using the marks. There may be some confusion here because Mattel sells Barbie books and magazines and cards etc.

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I was assigned the second two cases for infringement and I'm a little unsure how to apply these two cases to this hypo. They don't seem to be as relevant as the first two cases, but here goes!

In King of the Mountain Sports v. Chrysler, the Court noted that the two marks weren't similar when viewed side-by-side. They also emphasized that Chrysler had no intention to share in the reputation of the clothing company, and used as evidence of lack of intent that fact that Chrysler hadn't even performed a trademark search. Lastly, they found that there was minimal evidence of confusion.

In this case, it's unlikely there was any intent to share in the reputation of Mattel. Rather, this is almost the opposite, since the book is actually criticizing the Barbie brand. The book cover also looks pretty dissimilar to the usual Barbie logo, especially if one were to compare them side-by-side. And, it's hard to imagine there would be much confusion, or that anyone would think this book was written by Mattel or was part of the Barbie brand, especially since the subtitle explicitly states what the book is about.

Likewise, there is even less potential for confusion when you consider the images of the doll parts/clothes. The argument could be made that those are functional, rather than distinctive elements, since all types of similar dolls, not just Barbies, have legs and clothes that look like that. Simply using pictures of those items on the cover art is extremely unlikely to cause confusion in consumers. Prohibiting everyone from making doll clothes or dolls, or even using images of doll parts and clothes would have a significantly anti-competitive impact.

In the Dastar case, there was a question of whether there was an attribution right in section 43. However, Justice Scalia found that an attribution right in section 43 would interfere with copyright law. Since Fox let the copyright lapse for the TV series, it was part of the public domain, so they couldn't prevail on a trademark claim for lack of attribution.

In this case, I looked it up and Mattel has a valid trademark for Barbie in a variety of categories, such as digital media, TV, videos, children's toys and games, but I didn't see a listing for books. If that's the case, the trademark would be unregistered for books purposes, and would have fewer protections. I accidentally did the work for week 8 so I think this would end up being an analysis of whether it was blurred or diluted, but wouldn't prevail under that analysis since the use is so dissimilar and unlikely to cause confusion.

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The Lanham Act describes the rights to register a trademark in the broadest of terms. Shapes, sounds, and fragrances can act as symbols.

In determining whether a color could be used as a trademark in the Qualitex case, the court looked to see if the shade of green the Qualitex pads used is capable of satisfying the important statutory definition of a trademark: that a person uses the mark to distinguish the goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods.

The court also looked at whether the color served a functional purpose. Is the color a product feature that is essential to the use or purpose of the article? The court in this case determined that color isn’t essential to a product’s functionality, if the exclusive use of the color would not put competitors at a significant non-reputation related disadvantage.

I argue that, if POM were to trademark the color of its product, it could cause a competitive disadvantage to other companies. POM’s product is the color of the fruit from which the juice originates – pomegranate juice. If POM were the only company allowed to use the color of a pomegranate to advertise its product, it would put competitors at a disadvantage because people won’t be able to as clearly deduce if they are purchasing pomegranate juice.

The test then is if the color can reach a “secondary meaning” in the minds of the public. The question then is, will the public recognize the color of POM’s product to identify the source of the product?

I argue again that the color of a pomegranate is not unique to POM’s products; many companies sell pomegranate juice and use the color to advertise the product. Therefore, it would be difficult for POM to gain a product related secondary meaning to the color.

Therefore, under Qualitex, POM’s juice color is not trademarkable.

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The second line of analysis corresponds to trade dress protection.

The question in Two Pesos v. Taco Cabana was whether the trade dress of a restaurant may be protected based on a finding of inherent distinctiveness, without proof that the trade dress has secondary meaning.

The court said that trade dress protections serves the Lanham Act’s purpose to “secure to the owner of the mark the goodwill of his business and to protect the ability of consumers to distinguish among competing producers.”

To answer the queston of the case, the court looked at whether the trade dress of Two Pesos is inherently distinctive. In the case of POM, the trade dress – the physical shape of the bottle – is inherently distinctive. I cannot think of any other bottles that use the shape of POM’s. Therefore, because the shape is inherently distinctive, it can be trademarked without a secondary meaning.

However, I also think a secondary meaning has also been established – people correspond the shape of the bottles to POM’s products uniquely.

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Under Wal-Mart v Samara Bros, the court held that in an action for unregistered trade-dress, the burden is on the claimant to show that the design has a secondary meaning and is therefore distinctive.

The court distinguished between product packaging trade dress which is inherently distinct under Two-Pesos, and product design trade dress, for which secondary meaning must be proven.

The bottle for Pom could be analyzed as product packaging under Two-Pesos, but like in the shampoo bottle example given in Samara Bros, the bottle could also reasonably be considered a part of the product design, and the onus be on Pom to show secondary meaning to the design sufficient to establish distinctiveness. They would likely be able to make a strong case though, as the design looks like two pomegranates stacked on top of one another, it's unique and fanciful, but it is not particularly functional and limiting the use of this trade dress does not put a burden on other producers of pomegranate juice who may still use any other shape for their bottles.

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Whether the Design is Functional under Traffix

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Whether the Design is Functional under Traffix

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“[i]n general terms, a product feature is functional,” and cannot serve as a

trademark, “if it is essential to the use or purpose of the article or if it affects

the cost or quality of the article,” that is, if exclusive use of the feature

would put competitors at a significant non-reputation-related disadvantage.

The Restatement (Third) of Unfair Competition adds that, if a design’s

“aesthetic value” lies in its ability to “confe[r] a significant benefit that cannot practically be duplicated by the use of alternative designs,” then the design is “functional.” Restatement (Third) of Unfair Competition § 17, Comment c, pp. 175-176 (1995). The “ultimate test of aesthetic functionality,” it explains, “is whether the recognition of trademark rights would significantly hinder competition.” Id., at 176

Trademarks  do not protect functional features of products. Under Traffix, the double spring design that featured in an expired patent was not protected by the Lanham act as Trade Dress. An Inquiry into secondary meaning was unnecessary, because the springs were clearly a functional part of the product design and were not for aesthetic purposes or distinguishing the origin of the product. The Pom bottle is unlikely to fall into this trap, the shape of the bottle does not make it better or worse at holding a given amount of pomegranate juice, and if there are any functional benefits to having a bottle shaped this way, they are not related to the reason for the design, which is to create an eye-catching product for consumers reminiscent of the product they are selling.