Led by Mattel lead attorney Frank Holleman, who is running for South Carolina State Superintendent of Education, Judges Dennis Shedd, G. Steven Agee, and Clyde Hamilton upheld an order of federal trial court Judge Henry Floyd that required Super Duper to stop advertising and using seven products that had SAY in the titles, and pay Mattel $999,913 of its profits and $2.6 million in attorney's fees.* Without explanation, Judge Floyd upheld the jury verdict that eight other similar Super Duper SAY marks did not infringe or dilute Mattel's mark.
Thomas and Sharon Webber started Super Duper in 1986 in their home. Sharon is a speech-language pathologist and Thomas is a lawyer. Their company has created over 900 products for special needs children and today employs over 100 people.
Super Duper sells educational materials in the USA by its custom mail order catalog and website. www.superduperinc.com Unlike Mattel, which makes toys, Super Duper products are not sold in retail stores.
Mr. Webber stated, "In my opinion, this case is significant because the Court opened the door for all large companies to use trademark law as a weapon to compete with smaller businesses that cannot afford to fight them. Businesses depend on their trade names to build brand recognition. The big business demands that the smaller business change the names of certain products or services that have nothing in common with the big business and the small business has no choice but to give in. In the process, the small business loses money and the product brand recognition it has worked so hard to build up. This is wrong and needs to stop."
"For example," Mr. Webber stated, "we are a small mail order company that has nothing in common with Mattel toys. We had 15 SAY titles in lines of educational products we had developed for children with autism and other communication disorders. Even though there was no evidence anyone had ever been confused between any of our products and the Mattel toys, the Court took away seven of our SAY titles. We followed every legal step in properly registering our SAY trade names with the U.S. Patent and Trademark Office and NO ONE has ever had a problem with them - except Mattel."
Super Duper has used the SAY name on its speech and language products since 1987. Mattel did not object to any of these SAY trademark registrations until, in 2004, Super Duper applied to register a line of speech magnetic games called SORT AND SAY. Donald Aiken, Mattel's trademark division head, objected to this application, claiming consumers would be confused between Super Duper's specialized educational games and Mattel's SEE 'N SAY and THE FARMER SAYS pull toys.
According to Super Duper's appeal in the case, the Judge Floyd's order and the Fourth Circuit decision ignored fundamental principles of trademark law by dramatically lowering (or eliminating) the standards for a company like Mattel that attempts to prove trademark infringement and dilution by another company.
Trademark INFRINGEMENT centers on whether or not CONSUMERS are likely to be confused as to the source of a company's products. Here, Judges Shedd, Agee, and Hamilton ruled consumers were likely to be confused between the Super Duper SAY materials for children with autism and other communication disorders and the Mattel toys called SEE 'N SAY and THE FARMER SAYS, even though the trial record revealed:
- The seven SAY trade names taken away from Super Duper had NEVER been confused with any Mattel toy over a 17 year period.
- Witnesses who had used both Super Duper and Mattel SAY products testified they would never be confused between them.
- Super Duper (special needs educational and therapy materials for children) and Mattel (toys) were in entirely different industries.
- Super Duper sold its goods only by mail order catalog and on the internet to speech-language pathologists, special educators, teachers, and parents of children with autism, while Mattel sold to general consumers through large retailers like Wal-Mart and Target.
- Super Duper had registered its SAY trade names with the U.S. Patent and Trademark Office, and there are over 200 registrations with SAY in them.
- One of Super Duper's SAY trade names was "incontestable" under trademark law, yet Judge Floyd canceled it with the Trademark Office.
Trademark DILUTION focuses on whether or not a COMPANY has a trade name/mark which is so "famous" that it should be allowed to keep another company from diluting the "famous" mark by using a similar name or mark. One key to proving trademark dilution is showing that consumers "associate" (or think of) the famous mark when they hear/see the "diluting" mark.
Super Duper claims the courts erred in holding that Super Duper's SAY products diluted the trade names of the Mattel toys. Mr. Webber stated:
"-We do not agree with the court that the terms SEE 'N SAY and THE FARMER SAYS are "famous" trade names, similar to BARBIE, KODAK, and BUICK.
- We think there was no evidence at all that consumers 'associate' our seven Super Duper SAY products with the Mattel SAY toys. In other words, there was no evidence that when people heard the name of Super Duper's FISH AND SAY speech game, they thought of Mattel's SEE 'N SAY or THE FARMER SAYS toys.
- We disagree that we should pay Mattel our profits on these seven SAY products. Mattel admitted at trial it had never lost a sale due to Super Duper's use of the SAY trade name.
-Finally, we disagree that we should be required to pay Mattel's attorneys fees. These attorney's fees even include amount fees Mr. Holleman and the other Mattel attorneys billed for misconduct they committed prior to trial and for which they were sanctioned by the court."
Super Duper is appealing to the U.S. Supreme Court in hopes that the Court will overturn this decision and protect the rights of all businesses to keep their legitimate trade names.
For further 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 Keenan
Media Contact:
Name: Nancy Wolfe
Email: speakup@speakupforsay.com
Phone: 864-243-9000
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