Rimon Law Blog

This is interesting because “doll” in the singular form is no longer allowed to be used in the listing of goods and services in trademark applications. Rather, applicants must state “dolls” in the plural because using a mark in only one transaction is not enough for trademark rights to attach. In other words, you must sell multiple items (even if the items are identical dolls) for trademark rights to attach.

OK, back to Barbie.

In 1997, Aqua produced the song Barbie Girl on its album Aquarium. The song, somewhat surprisingly, made it into the Top 40. The Chorus goes like this –

“Barbie Girl”

I’m a barbie girl, in the barbie world
Life in plastic, it’s fantastic!
you can brush my hair, undress me everywhere
Imagination, life is your creation
Come on Barbie, let’s go party!

* * *
Come on Barbie, let’s go party!
(Ah-ah-ah-yeah)
Come on Barbie, let’s go party!
(uu-oooh-u)
Come on Barbie, let’s go party!
(Ah-ah-ah-yeah)
Come on Barbie, let’s go party!
(uu-oooh-u)

* * *

(Full lyrics found here)

In September, 1997, Mattel brought a trademark infringement lawsuit against the music companies who produced, marketed and sold the Barbie Girl song, including the band Aqua and its record label, MCA Records. In July, 2002, the 9th Circuit upheld the District Court’s ruling in favor of Defendants, finding use of the Barbie mark in the Barbie Girl song to be a nominative fair use and a parody. The court found that “the song pokes fun at Barbie and the values that Aqua contends she represents.” The case was publicly contentious, which led Judge Kozinzki to end with the best final sentence ever written in a judicial opinion, “The parties are advised to chill.”

In an ironic twist, Mattel apparently recently licensed Aqua’s song. It re-wrote the lyrics and released the song this year as its The Barbie® Official Music Video 2009. The video is part of a promotion to celebrate Mattel’s October 2009 release of new poseable Barbie dolls. The video is intended to teach you how to “Do The Barbie” dance. Look out country fans — the Barbie is soon to take over line dances everywhere! I wonder who owns the copyright on that choreography The next line of Barbie lawsuits awaits.

How did I find myself Blogging about Barbie on a Friday night It started this morning with the e-mail digest from the VERB LinkedIn Group asking for guesses on which song has the most brand mentions. Not knowing that the question really meant how many different brands were mentioned in a single song, I guessed Barbie Girl, which repeats Barbie over and over and over and over and over . . .

After posting to LinkedIn, I read the linked article and learned that the question originated with one of my favorite blogs, DuetsBlog, as the culmination to an entertaining blog about brands in songs.

MY DISCLAIMER — I have not read the complaint.

Instead, I saw Joel Rosenblatt’s article in the news section on the e INTA LinkedIn Group.

Joel’s article states that Weight Watchers sued Nestle because it’s Dryer’s ice cream sub-brand, SKINNY COW, improperly displays the Weight Watchers POINTS mark on the SKINNY COW packaging. So, next I looked at a package of SKINNY COW ice cream sandwhiches.

It states:

WEIGHT WATCHERS* POINTS=3
* Weight Watchers(R) and POINTS(R) are registered trademarks
of Weight Watchers Int’l, Inc. The points provided here were
calculated by Dryer’s Grand Ice Cream, Inc. based on published
Weight Watchers information and do not imply sponsorship or
endorsement of those points or of The Skinny Cow(R) by Weight
Watchers Int’l, Inc.

I don’t think this is a trademark use, especially with Nestle’s disclaimer (albeit in smaller font than the Nutrition Facts,may people would need glasses or a magnifying glass to read it). If consumers actually read the language below the POINTS, then none will be confused into believing that a sponsorship or endorsement exists between Weight Watchers & Nestle. I won’t speculate as to whether anyone other than curious trademark counsel actually reads that teeny, weeny disclaimer.

I do think it is unfair for Nestle to benefit from using Weight Watcher’s POINT system without permission. Nestle must have intended to and likely will lure customers away from Weight Watcher’s by use of Weight Watcher’s nutrition measurement POINTS brand. Further, presuming that Weight Watchers licenses its POINTS brand to competitors, then Nestle’s unauthorized use hasthe demonstrable effect of denying Weight Watchers’ licensing revenue.

It will be intresting to see how this case boils down.

Brands symbolize the relationships consumers have with companies and their products and services. Now, Open Brands is providing a way to watch and track that relationship. By monitoring these Brand Channels, as Open Brands calls them, Savvy brand owners will work with this information to maintain and improve the relationship they have with their customers in real time.Pretty cool!

The PTO TM Public Advisory Committee (“TPAC”) stated that the previous goal had been 2.5-3.5 months (for issuance of the initial OA). However, as a practicing trademark attorney, I’d say that OAs most commonly issue 3-4 months after the filing date.

I presume that most clients will be pleased with a shortened examination period, as most clients want their applications to issue as quickly as possible. The clients who will be negatively impacted by hastened examination are Intent to Use clients who sometimes have trouble brining their products and services to fruition as quickly as they initially hoped.

It will be interesting to see if the PTO meets its new goals and if so, how this effects the speed of the registration process overall.