Ninth Circuit: Reversible error to only consider one of the likelihood of confusion factorsAugust 3, 2007

In a trademark case yesterday, the Ninth Circuit held that the similarity-of-the-marks factor could not be considered exclusive of the other likelihood of confusion factors in determining trademark infringement. In doing so, the court reversed the grant of summary judgment against the defendant's counterclaims of trademark infringement, as well as the defendant's counterclaims for copyright infringement and dilution.More detail of Jada Toys, Inc. v. Mattel, Inc. after the jump.Jada Toys brought a trademark infringement claim against Mattel relating to a line of toy cars plaintiff produced. In response, Mattel counterclaimed for trademark infringement, dilution and copyright infringement against Jada, alleging that Jada's use of HOT RIGZ for a line of toy trucks infringed on Mattel's familiar HOT WHEELS brand. The district court granted summary judgment to each party on the claims. In addressing Mattel's trademark infringement counterclaim, the court relied only on the dissimilarity of the marks to determine that no likelihood of confusion existed and did not consider other relevant factors. Only Mattel appealed the grant of summary judgment, Jada chose not to appeal. Addressing the trademark infringement claims, the Ninth Circuit reaffirmed that the eight-factor Sleekcraft test was the proper test to determine likelihood of confusion. It held that, "while a likelihood of confusion determination may ultimately rest on a subset of factors, evidence of relatively important factors must be considered as part of that set." Thus, the district court should have weighed all important factors from the eight-factor test, not simply the similarity-of-marks factor, in order to determine trademark infringement. To support this holding, the court noted that the value of the multi-factor approach would be undermined if other factors like evidence of actual confusion and the context of the goods sold were not addressed, as a judge's determination of similarity of the marks would be subjective and could "weigh at the expense of other relevant evidence." The court found statements made in previous Ninth Circuit decisions claiming that dissimilarity of the marks was an "essential" factor were only dicta.

The Ninth Circuit then went on to address Mattel's dilution claim. The court affirmed that dilution should be found if (1) the mark is famous, (2) the defendant is making a commercial use of the mark, (3) the defendant's use began after the mark became famous, and (4) actual dilution is shown by a diminished capacity of the mark to identify goods. In order meet the "commercial use" requirement, the mark used by the alleged diluter must be identical, or nearly identical, to the protected mark."

In support of its claim, Mattel produced survey evidence that showed a number of respondents believed the "HOT RIGZ" mark was either made by Mattel or had received permission from Mattel to sell the product. The district court found that the marks were not sufficiently identical under the second factor, but the Ninth Circuit concluded that a reasonable trier of fact could find that the marks, both utilizing the word "HOT" as well as a flame design have a similar connotation and meaning. The Ninth Circuit also found that (i) Mattel's mark was famous, as it has been in use throughout the world and for over thirty-seven years, (ii) Mattel's mark was employed before Jada used its mark, and (iii) a reasonable trier of fact could find the survey evidence from Mattel was enough to establish actual dilution. Thus, the court held that the grant of summary judgment was improper with respect to the dilution claim.Lastly, the court addressed Mattel's copyright claim, namely that Jada's HOT RIGZ logo infringed Mattel's copyright in the design of its HOT WHEELS logo. In addressing whether the requisite copying could be shown to prove copyright infringement, the district court found that the marks at issue were not substantially similar because there was no similarity of ideas and no reasonable person could believe the marks conveyed a similar expression. Without stating a rationale (other than the subjective nature of the test), the Ninth Circuit held that a reasonable trier of fact could find the marks were objectively similar and that the "HOT RIGZ" mark could be "expressing the sense that the product sold under that mark is, essentially, a HOT WHEELS product." Thus, it reversed the district court's summary judgment finding that substantial similarity could not be found. As a result, the court remanded the trademark claims for consideration consistent with its findings and remanded the dilution and copyright claims for trial. To read the full decision in Jada Toys, Inc. v. Mattel, Inc., click here.

Update (2/22): The Ninth Circuit has issued a revised opinion, available here. The revised opinion clarifies some inconsistencies regarding its holding on Mattel's dilution claims.

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