After the Barbie movie’s resounding success, both Barbie and Ken costumes were incredibly popular choices for Halloween this year, and no doubt Barbie will be on many Christmas wish lists heading into the festive season. Mattel poked fun at themselves in the movie, but with plans to license many of their children’s toys properties for the movie treatment one thing is for sure – they are astute when it comes to business decisions. Here’s a brief look at the sort of intellectual property Mattel own for Barbie and the cases demonstrating how it is protected.
Barbie is one of the most valuable children’s toys brands in the world, and as such, Mattel go to great lengths to protect it. From the first Barbie patent for the doll’s construction (US3009284A), to many trade marks in jurisdictions worldwide for the Barbie logo and name – and a few for Ken and the rest of her friends, too – to registered designs for the dolls’ accessories, furniture pieces and even hairstyles (see USD89965), Mattel has registered many rights to protect a lot of Barbie-related intellectual property. The company is very protective of its intellectual property, having been in many legal battles over their registered trade marks over the years.
In contrast to these many registered rights, Mattel does not own any colour trade marks for Barbie’s signature pink – often referred to as “Barbie Pink” – despite it being used consistently for Barbie’s branding and packaging for decades. Although it has not been registered, consistent use of a mark over a long period to the point that it becomes associated with a company – acquired distinctiveness – may be applicable to the colour.
Mattel has relied on this concept for multiple legal battles – most notably against record label MCA after the release of pop group AQUA’s single Barbie Girl (Mattel, Inc. v. MCA Records, Inc.). Mattel argued that the use of the word Barbie and the pink colouring of the cover art would lead consumers to believe that the song was associated with Mattel’s Barbie brand. Unfortunately for Mattel, MCA eventually won the case with the ruling that their use of Barbie and the colour pink was protected as an example of parody.
A similar case occurred more recently in 2022 when Rap Snacks released Nicki Minaj themed chips branded “Barbie-Que”, leading Mattel to sue for trade mark infringement. Minaj has a history of association with Barbie, with her fans nicknamed “the Barbz”, a one-of-a-kind Nicki Minaj Barbie doll produced by Mattel in 2011 and auctioned for charity, and a song featured on the Barbie (2023) soundtrack, but Mattel claimed that there was no agreement for Rap Snacks to utilise the Barbie name and trade dress on the chips’ packaging. This was settled out of court and Mattel dropped the lawsuit, with Rap Snacks also changing the product’s name.
Although once upon a time (in 1998, in a judge’s comment on the aforementioned Mattel, Inc. vs MCA Records, Inc. case), “Barbie pink” was not considered distinctive enough to constitute a colour trade mark/distinctive trade dress due to the fact that many toys and products aimed at young girls utilised similar hues for packaging and advertising, some of the recent marketing efforts for Warner Brothers’ Barbie movie (including billboards with nothing but a pink background and the film’s release date) may tell a different story. When you see Barbie pink, you know it – it’s synonymous with the brand.
Although not all these legal battles went Mattel’s way, it definitely sets a precedent for them as a company willing to defend their IP rights.
Take Aways
It’s important to have a unified strategy that truly utilises the many different forms of protection available when it comes to intellectual property. When necessary, steps should be taken to enforce this protection and defend your brand against possible infringements of your IP rights.
Remember, a well thought out trade mark can communicate your brand personality and your values in a way that will resonate with your customers.
An identifiable trade mark is also an enduring “promise” to your customers of the experience and/or the quality of the product or service that you provide, which is why it is a powerful marketing tool that should be protected.
If you would like advice on which IP rights are best for protecting your IP assets, please don’t hesitate to contact one of our attorneys by heading to the Book a Meeting button or by emailing us at mail@mbip.com.au.