Appeals Court Rules SEE 'N SAY and THE FARMER SAYS Are "Famous" Trademark Names
Business Helping Children with Autism Must Pay Mattel Millions
Greenville, SC (MMD Newswire) July 29, 2010 -- In a trademark dilution and infringement action, the Fourth Circuit Court of Appeals has upheld a jury verdict and order by federal trial court Judge Henry Floyd that requires Super Duper Publications, a business making materials for children with autism, to stop advertising and selling seven product lines that have SAY and AND SAY in the titles, and pay Mattel Toy Company $999,913 of its profits and $2.6 million in attorney's fees.* http://pacer.ca4.uscourts.gov/opinion.pdf/091397.U.pdf
This opinion is important for three reasons: First, in affirming the jury verdict, Judges Dennis Shedd, G. Steven Agee, and Clyde Hamilton ruled the Mattel trade names SEE 'N SAY and THE FARMER SAYS were "famous" under federal trademark dilution law.*
Second, the Court allowed Mattel to prevail in the trademark infringement action even though the evidence of any likelihood of confusion among consumers was virtually nonexistent. The only similarity between the marks at issue presented by Mattel at trial was that they contained the common words SAY and AND SAY.
Third, the Court canceled (even though both forms are correct, you have spelled it with one 'l' in previous PR's so just for consistency sake several Super Duper SAY trademarks that had been properly registered with the U.S. Patent and Trademark Office years prior to any objections by Mattel.
This dispute centered around 15 SAY marks that Super Duper had registered or applied for registration on its speech and language therapy products from 1997-2004, and the Mattel trademarks SEE 'N SAY and THE FARMER SAYS, found on its mechanical pull toys. A jury held seven of Super Duper's SAY marks infringed on the Mattel marks and eight others did not. http://www.speakupforsay.com/documents/SD_MattelFinalJudgment%20.pdf
Evidence at trial weighing against the trademark dilution finding was the following:- Mattel presented no evidence that names SEE 'N SAY and THE FARMER SAYS were instantly recognizable, "famous" terms like BARBIE, COCA-COLA, or SONY.
- Mattel only presented evidence that their toys ("the cow says moo" pull toy) were "famous."
- The court ruled that it was the common words SAY and AND SAY in Mattel's marks which were "famous."
- Mattel presented no survey or other evidence showing consumers "associated" either of the Mattel names with any of the Super Duper trade names.
- The only evidence of Super Duper's "intent" was that prior to applying for registration of its trade names with the U.S. Patent and Trademark Office, its lawyers uncovered in their trademark searches the two Mattel trade names among over two hundred other SAY trade names.
- Prior to applying for registration, Super Duper received advice from its attorneys that its SAY marks would most likely be approved by the U.S. Patent and Trademark Office.
- From 1997-2004, all Super Duper SAY applications were approved by the Trademark Office without objection from anyone.
- In 2004 Mattel Trademark Division VP Donald Aiken opposed Super Duper's application for SORT AND SAY on a line of special needs magnetic board games claiming trademark dilution and infringement, despite the fact he had never heard of Super Duper prior to this application.
- Without explanation, the Court accepted the jury's finding that seven of Super Duper's SAY marks diluted Mattel's marks, while eight other similar marks did not.
- The Court upheld the jury finding that the Super Duper SAY marks both infringed upon and diluted the Mattel marks.
- Some of Super Duper's trademarks were incontestable; however, Judge Floyd canceled one of these incontestable marks. Mattel admitted it had never lost a sale on its pull toys due to Super Duper's use of its marks; nevertheless, the Court took almost $1 million in SAY profits away from Super Duper.
In the trademark infringement action, evidence opposing the court's finding of a likelihood of confusion was:
° The marks at issue involved the common, everyday words SAY and AND SAY.
° There had never been any consumer confusion with any Super Duper SAY mark anywhere for 17 T, I changed that based upon your handwritten edits? years prior to trail (1987-2008)
° Witnesses who had used both Super Duper and Mattel SAY products testified they would never be confused between them.
° Super Duper (special needs therapy materials for children) and Mattel (toys) were in entirely different industries.
° Super Duper sold its goods in the USA only by its custom mail order catalog and on its internet site. Mattel sold through large retailers like Wal-Mart and Target.
° Super Duper sold to highly specialized consumers like speech-language pathologists, special educators, teachers, and parents of children with autism. Mattel sold its toys to general consumers.
° Prior to applying for registration of its SAY trademarks, Super Duper received advice from its attorneys that the marks would most likely be approved by the U.S. Patent and Trademark Office.
° During the time of Super Duper's registration of its marks, there were over 200 registrations with SAY in them.
° All Super Duper SAY applications were approved by the Trademark Office without objection from anyone.
° Mattel presented no evidence it had ever policed its SAY trademarks. Mattel also admitted at trial it had not even heard of Super Duper until 2004.
° Some of Super Duper's trademarks were incontestable (Judge Floyd canceled one of these incontestable marks).
The appellate judges refused to weigh the evidence in accordance with the three trademark dilution factors traditionally applied by the Fourth Circuit, and the seven trademark infringement factors they had applied in the past. Instead, they left this analysis for the jury. The appeals court also refused to overturn the verdict despite several erroneous jury charges by Judge Floyd as stated in its opinion.
A Mealey's Lexis Nexis review of the appeal , written in 2009 prior to the appeals court's decision, which followed previously established dilution and infringement law, concluded Mattel's case had no merit.
Super Duper is appealing the case to the U.S. Supreme Court.
For more information, go to www.speakupforsay.com.
* The other Judges on the Fourth Circuit who refused Super Duper's Petition for Rehearing are Chief Judge William B. Traxler, Jr.; Judge J. Harvie Wilkinson III; Judge Paul V. Niemeyer; Judge M. Blane Michael; Judge Diana Gribbon Motz; Judge Robert B. King; Judge Roger L. Gregory; Judge Allyson K. Duncan; Judge Andre M. Davis; and Judge Barbara
Milano Keena
Media Contact : Nancy Wolfe
Email: speakup@speakupforsay.com
Phone: 864-243-9000
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