With “Barbie” the movie on top of the world, it’s almost inevitable that the markets will be flooded with hot pink knockoff products. Competitors often skim pretty close to the line when developing products meant to capitalize on trends.
Those whose products look too much like official Barbie merchandise may run into trouble. Barbie’s manufacturer, Mattel, is prepared to protect its intellectual property. Indeed, it is still involved in a series of IP disputes that dates back to 2005.
Bratz, Barbie’s first big competitor, hit the shelves over 20 years ago. Were they just knockoffs of Barbie?
In 2001, a new set of adult fashion dolls hit the scene: Bratz. In just five years, Bratz dolls garnered about 40% of Barbie’s turf.
You might expect Mattel to have batted down the Bratz as a knockoff product. It was actually Bratz’s parent company MGA Entertainment, Inc., that sued Mattel.
When Mattel released a set of “My Scene” Barbie dolls, MGA claimed those specific dolls were too similar to Bratz dolls and violated their intellectual property rights.
Mattel countersued, pointing out that the designer of the Bratz dolls had previously worked for Mattel – twice. Mattel claimed that she originally designed the Bratz while working under contract with Mattel and that the designs were therefore Mattel’s intellectual property.
In 2008, a jury agreed with Mattel. MGA had to pay Mattel $100 million and was forced to take the Bratz dolls off shelves for about a year.
MGA didn’t give up. It later sued Mattel for stealing its trade secrets. Earlier this year, a jury agreed with MGA. It is almost certain Mattel will appeal.
Hot pink users beware: ‘Barbie pink’ could be trademark-protected
What about those, shall we say, Barbie-adjacent products? Pink dresses, shoes and hats. Rentals of pink cars. An Airbnb rental that looks a lot like Barbie’s dream house. Is it OK to capitalize on the moment by making non-doll products pink?
When companies use “Barbie pink,” Pantone 219C, they might be violating Mattel’s trademark.
According to the Fashion Law blog, Mattel doesn’t actually hold a registered trademark on Pantone 219C or other colors associated with Barbie. However, that might not matter. Courts have previously ruled that companies can claim a color is copyrighted if it has acquired “distinctiveness” over time.
There is a good chance courts would rule “Barbie pink” to have become distinctive, at least when applied to dolls. In fact, Mattel assumes that they would. It has filed at least two trademark infringement lawsuits that rely in part on misuse of the signature color.
The issue isn’t settled law yet, but companies in competing industries would be wise to remain cautious before releasing pink-themed merchandise.
