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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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Everyone write 2 replies.

Hypo 1 Main
Matt
Kory

Hypo 2 Main Post
Cecina
Mike

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Under the four cases provided, POM’s packaging would likely be held to be protected trade dress.

Similarly to Two Pesos v. Taco Cabana, where the court held that the trade dress of a product, including features such as size, shape, color, texture, graphics, can be infringed because the trade dress was not functional, confusingly similar, inherently distinctive, Pom’s packaging meets these same standards. It’s unique shape, design, color, taken together provide unique and protectable trade dress.

It’s design is not a functional requirement, essential to its use or purpose, as discussed in Qualitex v. Jacobson and TrafFix Devices v. MDI. Rather it’s design is unique outside the norm for shapes of bottles, font, and color choices.

Distinguishing from Wal-Mart v. Samara Bros, and it’s analysis of product design, not product packaging, is the fact that the product here is the juice, not the packaging. The packaging is what is distinctive.

The expansion of the law is particularly helpful in identifying products quickly. Without seeing the logo, I would be able to identify pomegranate juice, in this shape bottle, as being POM, due to the marketing of their product. This awareness helps identify products easily to their customers, and if unique packaging was not covered by this protection, less companies would do so.

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I think Kory nailed the analysis on trade dress and on the shape of the bottle. The bottle shape is a strong trademark that would be difficult to contest. Adding to the analysis, the shape of the POM bottle has acquired secondary meaning through its history and marketing efforts. However, it would not need to prove secondary meaning to get protection. Inherently distinctive trade dress can be protected without a showing of secondary meaning.

Inherently distinctive trade dress are non-descriptive and non-functional. The bottle's shape was not likely designed to function better than some orrdinary bottle shape, and the shape does not describe the varying juices that POM Wonderful sells. Therefore, the bottle's shape is inherently distinctive.

However, the graphical and text marks are a different story.  The POM logo with its iconic heart replacing the "O" is a strong mark that POM Wonderful has invested a great deal into. However, the base 'word' "POM" is clearly just a shortened version of pomegranate.

POM Wonderful raised the issue of infringment when it sued the beverage company Pur over its drink  "pom" (https://tushnet.blogspot.com/2016/07/pom-and-circumstance-pom-wonderful-wins.html)

Pur's use of pom was in lower case letters, in a different font, and used an accented o instead of the heart. POM wonderful lost at trial court but eventually won and got an injunction to stop Pur from using their mark. However, I don't entirely agree with the court.

Likelihood of confusion depends on  up to 8 factors depending on jurisdiction, but the ultimate question described in the Toucan case is whether a consumer would misidentify the source of the product based on the mark.

Both products are clearly in the same industry and would use the same marketing channels which weigh to confusion. Thus, the marks will be examined for substantial similarity. While both marks use the text "pom", there is no way any consumer would confuse the two marks. The court on appeal ignored the ultimate question instead finding for POM on similarity, strength of the mark, consumer care, and marketing channels.

For better or for worse, that case shows that the factors can be the ultimate conclusion for likelihood of confusion, and POM will be a very protectable trademark going forward.

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Section 32 of the Lanham Act and 15 U.S.C. section 1114 provide the elements that have to be met for a registrant to bring action against an infringer.

When reviewing the 4 cases and law above, Mattel has a weak case against the author of the book. The use is nominative fair use because the author is using the trademarked word in reference to the mark's goods or services.

Most people know what Barbie is. The author of this book is not creating a doll or similar product and calling it "Barbie." Rather, the author is using the knowledge of what "Barbie" is as a reference. Additionally, the author's use of "Barbie" does not generate a likelihood of confusion or false endorsement on behalf of Mattel.

As demonstrated in Kellogg Co. v. Toucan, the likelihood of confusion did not exist because one was related to cereal and the other to golfing. Here, a reasonable person is unlikely to confuse the use of "Barbie" on the cover of the book with the doll.

Unlike Experience Hendrix, LLC v. Electric Hendrix, LLC, there is not a likelihood of confusion using the word "Barbie." There was a likelihood of confusion with the use of Jimi Hendrix's name. The plaintiff has mark's in the class of goofs that the defendant registered their mark. It is likely that one would confuse the two marks. Here, the author of the book is only using the mark in connection with the goods and services to create an understanding.

As discussed in King of the Mountain Sports, Inc. v. Chrysler Corp., 43(a) of the Lanham Act identifies the types of confusion. There is confusion as to "affiliation, connection, or association of such person with another person," and confusion as to "the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person." Here, the author was not creating a connection or sponsorship between the book and the doll. There is no likelihood of confusion to lead one to believe the book is related to the actual doll.

Here is another case that demonstrates two almost identical marks that the court found to not have a likelihood of confusion:  Allstate Ins. Co. v. Kia Motors Am., Inc., 784 Fed. Appx. 507, 508 (9th Cir. 2019).

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To be liable for trademark infringement under  15 U.S.C. Section 1114, the mark in question must be "likely to cause confusion, or the cause mistake or to deceive" the consumer of the product or service in question.

It is highly unlikely given the adversarial nature of the title that a consumer would think that the book was sold by or affiliated with Mattel.

Looking at Kellogg Co. v. Toucan Golf, Inc. 337 F.3d 616, the 6th circuit applied a series of 8 factors to analyze the likelihood of confusion between two marks.
In short, Mattel has a very strong mark with Barbie, but while Mattel may sell children's books in bookstores, the products are otherwise unrelated even if the avenue is similar. Moreso, while the mark is obviously similar as it is referencing a known mark the application is nearly satirical and unlikely to cause confusion. Mattel would have a hard time showing actual confusion as the target market is dissimilar, and the defendant intended to reference the mark for color and impact rather than boost sales by piggybacking on Barbie' success by deceiving the consumer of the source.

In analyzing the issue under King of the Mountain Sports, Inc. v. Chrysler Corp. 185 F.3d 1084, it is highly unlikely that a consumer would believe that Mattel was sponsoring the book in any way given the nature of the book. Furthermore, it would be hard for Mattel to argue that "the defendant had the intent to derive benefit from the reputation or goodwill of plaintiff" as they are likely targeting women who dislike the image Barbie portrays.

Lastly, if we look at Dastar Corp v. Twentieth Century Fox Films, 539 U.S. 23,  the origin of the book is most likely considered to be the author and the consumer is unlikely to be confused by the origin.