Thursday, November 30, 2006

Fame of "HOT WHEELS" Fuels TTAB 2(d) Victory Over "HotToyz" Trademark

The Board showed the Black Flag to Stephen Daniel Scott's application to register the mark "HotToyz"(Stylized) for magazines and Internet-based advertising services relating to high-performance vehicles. The du Pont fame factor fueled the Board's finding of likely confusion with Opposer Mattel's HOT WHEELS marks, registered for, inter alia, toy vehicles, automobile races, and Internet informational services. Mattel Inc. v. Scott, Opposition No. 91123052 (November 21, 2006) [not citable].

Mattel erected an impenetrable roadblock consisting of some 20 registrations for its HOT WHEELS mark. The Board found it necessary to focus on only two of them, one for the mark shown immediately below for toy vehicles, and one for the word mark HOT WHEELS for Internet-based entertainment and informational services concerning toy vehicles, professional automobile racing cars, professional automobile races, and standard, custom, and classic autos.

The Board first found that the HOT WHEELS typed mark and flame design are famous, "at a minimum for toy vehicles," based on more than 37 years of use of the mark for toys (more than 2 billion manufactured), substantial sales revenues, extensive advertising, numerous website visitors, 100 licensees for various products, and registrations for the mark for a various types of merchandise. The Board stressed that this fame factor "plays a dominant role" in its du Pont analysis.

Turning to the marks at issue, the Board found the design elements to be "strikingly similar:" as opposer noted, the letters "bend in accord with the flames." Furthermore, the stylized forms of lettering are also "strikingly similar." Both marks begin with the word HOT, the second word in each begins with a capital letter, and each ends in a plural form. The words WHEELS and TOYZ have different meanings, but both marks have the connotation of "hot vehicles." And the word TOYZ "directly applies to opposer, famous for toy vehicles." The Board concluded that, given the fame of Opposer's HOT WHEELS mark, the similarities in the marks outweigh their differences.

As to the goods and services at issue, the Board noted that Mattel, in marketing its goods, produces and displays life-size, fully functional versions of HOT WHEELS vehicles. Moreover, the HOT WHEELS mark is displayed on life-size race cars. And Mattel's website offers information on race cars and classic automobiles. Thus Applicant's magazines and website overlap in subject matter with Opposer's goods and services. The Board therefore found the goods and services of the parties to be related, ruling that in light of the fame of Mattel's marks, "consumers would view the respective goods and services as having common source or sponsorship."

As to channels of trade and potential purchasers, Mattel targets not only children but also adult collectors for its toy vehicles. Moreover, Internet users seeking information on vehicles "could easily encounter both applicant's mark and opposer's mark." And Applicant's magazines will be sold in the same types of stores (grocery stores, convenience stores, and gas stations).

Finally, as to purchaser sophistication, the Board agreed with Applicant that buyers of automobiles would exercise care in their purchasing decisions. "However, given the fame of opposer's marks the relative importance of this factor is minimized."

The Board concluded that confusion is likely, and it therefore sustained the opposition.

TTABlog note: Had Applicant not included the flame design in its mark, this would have been a more interesting case. Although not mentioned explicitly, there was a whiff of bad faith in the air regarding Applicant's mark.

On second thought, I changed my mind. What else would you use with the word "hot?" Ice cubes?

Text Copyright John L. Welch 2006.


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