BARBIE Comes Out Swinging

By Eric Sinrod, 

(August 28, 2007) - It is not a good idea to offend BARBIE. Case in point - Mattel has just filed a federal lawsuit in New York against a company called Global China Networks (GCN) for infringing on the BARBIE trademark by way of the domain name chinabarbie.com for a pornographic Web site. Mattel accuses GCN of cybersquatting, trademark dilution, trademark infringement, and unfair competition. Mattel seeks an injunction preventing GCN from using Mattel's BARBIE trademarks, transfer of the chinabarbie.com domain name, as well as general, treble, statutory and punitive damages.

Mattel paints a vivid picture in its lawsuit about how its has built up the favorable public association of the BARBIE trademarks with Mattel. Mattel points out that it 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-iot.

Starting in the Handlers' garage, Mattel vastly expanded its operations after World War II and thrived as its reputation spread for producing high-quality toys. In 1959, Ruth Handler created the BARBIE doll, which was named after Elliot and Ruth's daughter - Barbara. The concept for the doll was sparked after Ruth observed that her daughter liked to play with paper cut-outs of adult female fashion dollars instead of baby dolls.

Mattel has 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, for example, and her boyfriend, KEVIN.

BARBIE dolls are so popular that annual sales exceed $1.6 billion, according to Mattel. Indeed, Mattel claims that every second, two BARBIE dolls are sold somewhere in the world and that a typical American girl, between the ages of three and eleven years, owns an average of eight BARBIE dolls. Since 1959, Mattel reports that it 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 Mattel wants is for another company to seek unfairly to benefit from Mattel's BARBIE trademarks.

Then along comes GCN and it registers of the domain name chinabarbie.com for a pornographic Web site, according to Mattel. Do you think this made the BARBIE people at Mattel happy? Not! No big surprise, Mattel has filed a federal lawsuit probably not only to obtain injunctive relief and damages in this particular case, but also to send a message to other potential infringers to stear clear of Mattel's trademarks.

By its lawsuit, Mattel does not want other companies to benefit from the goodwill it has established in its trademarks, nor does it want other companies to confuse the public as to the source of products. On top of that, Mattel does not want its trademarks to be diluted or tarnished - specifically, it harms Mattel if the public is confused and starts to associate Mattel or its products with pornography.

Under the weight of Mattel's lawsuit, perhaps GCN voluntarily will transfer the offending domain name, cease using Mattel's trademarks and otherwise will try to resolve the dispute informally. On the other hand, GCN might claim that it is entitled to use "BARBIE" in its domain name, as BARBIE is a common name and because 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.

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