Perspective: Barbie comes out swinging

It is not a good idea to offend Barbie.

Case in point--Mattel has sued a company called Global China Networks for infringing on the Barbie trademark. The dispute stems from GCN's use of the domain name ChinaBarbie.com, a pornographic Web site.

Mattel accuses GCN of cybersquatting, trademark dilution, trademark infringement and unfair competition. It seeks an injunction preventing GCN from using Mattel's Barbie trademarks. It also asks the court to transfer the ChinaBarbie.com domain name and award general, treble, statutory and punitive damages.

In its lawsuit Mattel details how it built up the favorable public association of the Barbie trademarks. Mattel was founded in 1945 by Elliot and Ruth Handler and Harold "Matt" Mattson. The name of the company was created by incorporating the names of the two founders: "MATT"-son and "EL"-liot.

Starting in the Handlers' garage, Mattel vastly expanded its operations after World War II. As its reputation spread for producing high-quality toys, the company thrived. In 1959, Ruth Handler created the Barbie doll, which was named after Elliot and Ruth's daughter, Barbara. The concept for the doll came about after Ruth observed that her daughter preferred to play with paper cutouts of adult female fashion dolls rather than with baby dolls.

Mattel has now sold Barbie dolls for more than 40 years. And, of course, Mattel markets other dolls and products as part of its Barbie doll line. (Let's not forget Barbie's sister Skipper and their respective boyfriends, Ken and Kevin.)

Barbie dolls are so popular that annual sales exceed $1.6 billion. According to Mattel, two Barbie dolls are sold somewhere in the world every second and a typical American girl, between the ages of 3 and 11 years, owns an average of eight Barbie dolls. Since 1959, Mattel has sold more than one billion Barbie dolls worldwide.

Mattel has registered a number of Barbie trademarks with the United States Patent and Trademark Office to protect its rights in its Barbie marks. Mattel has used the Barbie trademarks to capitalize on the tremendous goodwill it has achieved through its Barbie products. The last thing management wants is for another company to unfairly benefit from Mattel's Barbie trademarks.

Then along comes GCN and it registers the domain name ChinaBarbie.com for a pornographic Web site, according to Mattel. No surprise, then, when Mattel filed a federal lawsuit. In addition to its pursuit of injunctive relief and damages, Mattel also wanted to send a message to other potential infringers: steer clear of Mattel's trademarks or else.

Mattel has invested a lot to build up the goodwill established in its trademarks. That's why it's keen to prevent other companies from confusing the public about the source of products. The last thing Mattel wants is to see its trademarks diluted or tarnished. In this case, if the public gets confused and starts to associate Mattel or its products with pornography, the resulting damage to its reputation would be severe.

Faced with Mattel's lawsuit, perhaps GCN will voluntarily transfer the offending domain name, stop using Mattel's trademarks and try to resolve the dispute informally. On the other hand, GCN might claim it is entitled to use "Barbie" in the domain name because Barbie is a common name. GCN otherwise has a legitimate purpose for using that word within its domain name.

However, given Mattel's lengthy use of the Barbie trademark in commerce for decades and the overwhelming strength of the mark and association with Mattel's products, it is very possible that any defense of GCN in court would not gain traction.

We shall see.

Biography
Eric J. Sinrod is a partner in the San Francisco office of Duane Morris. His focus includes information technology and intellectual-property disputes. To receive his weekly columns, send an e-mail to [e-mail] with "Subscribe" in the subject line. This column is prepared and published for informational purposes only, and it should not be construed as legal advice. The views expressed in this column are those of the author and do not necessarily reflect the views of the author's law firm or its individual partners.

More Perspectives

[eccesignum]

Kevin?

I believe Barbie's boyfriend's name is Ken.

[Zoe Slocum]

Barbie and Ken, Skipper and Kevin

Yes, Ken is Barbie's beau. But how can we forget Kevin, Skipper's longtime boyfriend? Here's a fan page devoted to Kevin: http://www.manbehindthedoll.com/KV.htm. And a Barbie "family tree": http://adelesbarbies.tripod.com/id18.html. And a Wikipedia entry about Skipper: http://en.wikipedia.org/wiki/Skipper_Roberts. To clear up any ambiguity, we have tweaked the Perspective text.

[inachu]

Barbie as a copyright.

Barbie is a household name and so common I have seen in my lifetime some girls being called lack of a better terminology "Barbie"

Lisa, "Oh! Isn't she a little Barbie!"
Betty replies, "So cute isn't she?"

So having a competitor using BARBIE making dolls is a plain blatant copyright infringement but whereas Barbie being used not to be used for child dolls but as a metaphor that a woman can be as cute thus not really selling a competing product but by name alone.

So this case is really about Brand name recognition and not just soiling giving bad image but keeping the reputation of the name as a wholesome family brand.

I suspect the adult website will not win.

[cartablst]

who?

Kevin? Seriously? KEN. Good old plastic-haired Ken.

[perfectblue97]

corporate goons

I hope that Mattel don't get very far with this, if they do it would be a dark day for the courts. Barbie is a common name, and it's not as if the website used Mattel's logo or even a picture of a Barbie doll on the front page.

This is corporate goonery and bullying, nothing less. Big name companies throwing their weight around.

What next, the feds suing a gardening website for being called AmericanBush.com, or the British suing the band "Queen" because it infringed on the title of "the Queen"?

[K.P.C.]

What a joke . . .

Reminds me of Spike Lee trying to trademark the letter "X"
Dude, it's a letter in the alphabet! Get over yourself!

Here's a little something for our litigious friends at Mattel:
http://photo.net/photodb/folder?folder_id=581929
http://photo.net/photodb/folder?folder_id=614612
http://www.youtube.com/watch?v=zEzh10_xoqw
http://www.cnn.com/2007/US/law/08/22/barbie.bandit.ap/ind
ex.html
http://en.wikipedia.org/wiki/Klaus_Barbie
http://www.australianbeers.com/culture/barbies.htm
http://www.barbiealmalbis.com/main2.htm
http://www.barbieslapp.com/abuses/index.html
http://www.stickam.com/editMediaComment.do?
method=load&mId=174424556

Cheers ;-)

[devbost]

I can see the headline in The Onion now

"Mattel sues Klaus Barbie for trademark infringement"

[wbenton]

With all the other illegal stuff from China...

With all the other illegal stuff from China, this one doesn't surprise me at all.

China needs to learn that it CAN be held accountable for what it does, but until those who hold them accountable... actually follow through and do so... I only see more of the same.

It's nothing new... only thing is that few companies have stood up and done something about it.

Sounds like way past time that more need to do the same!

Walt