War to claim 'Barbie Pink': Who can use name of the Panetone shade?
The war to claim ‘Barbie Pink’, from Mattel’s trademark battles with Aqua to who can use the name of the Pantone shade
- Pink has been a top trend recently, and new Barbie film means that will continue
- READ MORE: Greta Gerwig shares the real-life inspiration behind Kate McKinnon’s Weird Barbie – revealing ‘I had a lot of hand-me-down dolls’ as a child
Pink has been the fashion set’s colour of the season, being the trademark hue of the new Barbie film – and the toy’s maker Mattel is keen for people to associate the tone with its flagship product, going as far as waging legal war on others who use it.
While the popularity of pink, which only became associated with girls in the 1920s, when US department stores earmarked the colour for them, assigning blue to boys – has ebbed and flowed, it is currently having a moment.
And of course the tone du jour is Barbie Pink, a brazen and very pink pink, which corresponds most closely to Pantone Matching System 2019, or PMS 219.
Kim Culmone, Mattel’s senior vice president and global head of Barbie and fashion dolls design, told Forbes pink is ‘a symbolism of empowerment. Barbie is the original girl empowerment brand’.
Stephen Sheldon, a stylist at Luxury Legs, previously told Femail: ‘It is absolutely an empowering colour, and that’s because it’s the colour of love and kindness – two words that have helped shape modern 21st-century society.’
Pink, specifically ‘Barbie Pink’ is the hottest colour of the minute, largely thanks to the recent release of the movie about the doll
The official Pantone shade of Barbie Pink is 219C, it is brash, bright tone, which is very loud, and very pink
While pink has been used as the predominant colour in the packaging of Barbie dolls since the 1970s (some 11 years after the toy’s launch in 1959), maker Mattel doesn’t possess trademark registrations for hues on their own.
Examples of companies trademarking colours include the jewellers Tiffany’s, which has registered its pale turquoise colour – described as ‘robin egg blue – for use on a range of its products and services.
And while Mattel has tried to register ‘Barbie Pink’ with the US Patent and Trademark Office more than once in the last two decade for use on goods, it has not completed any of these applications.
But as trademark lawyer and Suffolk Law IP Clinic Director Rachael Dickson told the Fashion Law, the Barbie Pink used for the dolls’ packaging ‘has gained distinctiveness over the years’, with the outlet pointing out that ‘a single colour… may function and be protected as a trademark as long as it has acquired distinctiveness’.
And, the outlet added, if a company is widely-known enough, the continued use of a colour is likely to lead consumers to associate that hue with the brand.
Certainly, Mattel seems keen to retain that association, and has entered into a number of legal wrangles with others who have sought to use the colour.
Among them, in 1997, the company filed a lawsuit against music label MCA Records, for its band Aqua’s song Barbie Girl.
As well as accusing Aqua of ‘trademark infringement, unfair competition and trademark dilution’, Mattel took exception to the use of lyrics including ‘kiss me here’ and ‘touch me there’, saying they were damaging to Barbie’s reputation.
Mattel tried, unsuccessfully, to sue band Aqua (pictured) over its 1997 hit Barbie Girl, citing its use of Barbie Pink among its complaints
Using the brand’s trademark colour for mimicry of Barbie’s accessories, including her pink Dreamhouse, was cited in the suit.
According to Mattel, Aqua was misappropriating its ‘BARBIE Packaging Trade Dress’, by using its ‘white and distinctive pink colours’ widely in the music video accompanying the tune.
A summary judgment read: ‘Besides its claims regarding the use of the name “Barbie”, [Mattel] also asserts that [MCA] misappropriated [its] trade dress, specifically the use of so-called Barbie “pink” in the Barbie Girl packaging and video.’
Meanwhile, MCA defended the hit, which it described as a ‘fun, funny pop song’.
It pointed out that every copy of the CD and cassette came with a disclaimer in an accompanying booklet, which said: ‘The song Barbie Girl is a social comment and was not created or approved by the makers of the doll.’
The court sided with the record company, stating that Mattel ‘cannot show that its use of the colour pink has acquired secondary meaning’.
Pink was already one of the most fashionable colours of the season, and its popularity seems unlikely to wane for some time, after having such a starring role in Barbie
It added that pink is ‘used on many products associated with young girls’, saying that Mattel had failed to provide evidence as to ‘how its pink differs from that used on these other products’.
A few years later, the US Court of Appeals for the Ninth Circuit also ruled in favour of MCA, ruling that the song was a parody, and was ergo free speech protected by the First Amendment.
Notably, Judge Alex Kozinski reportedly closed his opinion with the now-famous line ‘the parties are advised to chill’.
An attempt to appeal the dismissal was upheld, and Mattel was unsuccessful in its attempts to get the lawsuit heard by the Supreme Court.
Speaking about the lawsuit in 2022, to Rolling Stone magazine, the band’s lawyer Russell Frackman said: ‘The lawsuit had 11 different claims. They pretty much threw the kitchen sink at us. They all boiled down essentially, in one way or another, to trademark infringement. They even claimed that they infringed on what they called “Barbie Pink”.
Band member Dif added: ‘The first thing I thought was, “wow, the biggest toy company in the world is going after the little band from Denmark?”.’
The release of the new Barbie movie has put Pantone 219C (aka Barbie Pink) firmly under the spotlight
More recently, Mattel filed a complaint against Rap Snacks, stating in its August 2022 suit that the Barbie-Que Honey Truffle Potato Chips created by the brand in collaboration with rapper Nicki Minaj used ‘blatant and intentional use of [its] trademark’.
As well as the use of the name ‘Barbie’, the packaging featured pink hues.
The company wrote: ‘Rap Snacks made the deliberate and calculated choice to launch a new product line using Mattel’s famous Barbie trademark.
‘Defendant’s blatant and intentional use of Mattel’s trademark will cause consumers to associate the defendant’s products with Mattel and its Barbie brand.’
That case was settled after just a month, when Mattel asked the federal court to dismiss it with prejudice (meaning it can’t be brought again). The terms of any settlement were not disclosed.
Source: Read Full Article