‘Motown Metal' Hot Wheels Will Confuse, Dilute UMG Records' Famous ‘Motown' Mark

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By Tamlin H. Bason

Mattel Inc.'s “Motown Metal”mark for toy cars is likely to cause confusion with UMG Recordings Inc.'s “Motown” mark, the Trademark Trial and Appeal Board ruled Sept. 30, saying that the record company's mark has been in use for nearly 50 years and noting that the mark was so famous that it has become synonymous with the city of Detroit in some instances (UMG Recordings Inc. v. Mattel Inc., T.T.A.B., No. 91176791, 9/30/11).

Though third parties sometimes do refer to the city as Motown, the board said that that fact alone does not diminish UMG's value in the mark because the company was the first to use the term, and for the most part all subsequent uses refer in some way to the association between the city and the recording company. Accordingly, the board said that the new mark was likely to cause confusion and dilution because consumers would assume that UMG was in some way associated with Motown Metal. Therefore, the board rejected Mattel Inc.'s application to register the mark for a new a line of toy cars.

Mattel Wanted Detroit Muscle Line of Hot Wheels

In 2006 and 2007 Mattel began marketing five classic American “muscle cars,” including a 1970 Chevrolet Chevelle, a 1965 Ford Mustang, and a 1969 Pontiac GTO, under the Motown Metal mark. The cars were part of Mattel's Hot Wheels series, which are marketed towards children and collectors.

Mattel applied to register the Motown Metal mark under Class 28 for “toys, games and playthings.”

UMG opposed the application. It argued that the proposed mark was too similar to the Motown mark that it first registered in 1977. UMG argued that the Motown Metal mark was likely to cause confusion.

Board Rebukes Parties for Large Record

The board chided the parties for creating a record that was “overly large” and that “tax[ed] the limited resources of the board.”

The board noted that Mattel had submitted over 900 pages to support its argument that the word Motown has been used by third parties to refer to the city of Detroit. Because the board must look at all evidence presented, “the better practice would have been to submit a representative sample of such articles,” the board said.

Similarly, the board scolded UMG for introducing a detailed and overly broad account of its history as a recording company. Such history was never in question and was hardly relevant, the board said.

 

The better practice for a party before the Board would be to focus on supporting … the main fact to be established; rather than forcing the Board to sift through reams of documents and testimony to find the evidence specifically relevant and necessary to establish a party's position.

After summarizing the lengthy record, the board turned to the issue of confusion.

Mattel Says Motown Is Merely a Geographic Identifier

Mattel argued that the word Motown refers primarily to the city of Detroit. Thus, Mattel said that the word is a geographic identifier and that there is a “goods/place association” between the city and the word. Accordingly, Mattel argued that the mark is not descriptive and therefore it should be permitted to use the term to refer to its line of cars, all of which are based on models that were actually manufactured in Detroit.

Mattel also pointed to third-party uses of the word Motown, both by media to identify the city of Detroit, and in some cases commercially to identify goods.

Administrative Trademark Judge Carlisle Walters said that “the record clearly establishes that the word MOTOWN was created by opposer's predecessor's founder, Berry Gordy” nearly 50 years ago. He chose the term because it combined elements both from Detroit's famous nickname of “motor city,” and because Detroit was his home town and would be the location of his recording company.

The board then turned to whether the term had become a geographic identifier. It determined that it had not.

The board noted that UMG achieved a high level of fame with its Motown Records label. Largely because of this fame, some third parties have indeed referred to Detroit as Motown on occasion. But, the board said, “A non-geographic designation originally used as a trademark is not ‘primarily' geographically descriptive if it becomes, only later, attached to a specific geographic location.”

The board said that any media uses of Motown to refer to Detroit were noncommercial in nature and therefore were not relevant. The court quoted Mattel Inc. V. MCA Records Inc. 296 F.3d 894, 63 USPQ2d 1715, 1718 (9th Cir. 2002), for the notion that “A trademark owner does not have the right to control public discourse whenever the public imbues his mark with a meaning beyond its source identifying function.”

As for the few third-party uses in commerce, the board said that those instances were by “difficult to monitor groups.” The board also said that those uses were “informal.” On the whole, the board said that UMG “has an active and extensive trademark enforcement program in connection with its MOTOWN marks and opposer states that to the extent it was aware of any of these uses, it considers them insignificant and/or non-competing.”

The board thus concluded that any third-party uses did not diminish UMG's strength in the mark. Moreover, such uses did also did not “render the mark primarily geographically descriptive.”

Similarity in Goods and Services

Mattel argued that the toy cars that it was marketing under the Motown Metal phrase were dissimilar from any product that UMG has marketed under the Motown mark. Thus, Mattel said that there was no likelihood of confusion. Mattel also argued that the use of its famous Hot Wheels mark in connection with the Motown Metal phrase precluded any confusion. The board disagreed.

The board said that the issue is not whether a consumer would confuse the toy cars with UMG's products, but rather whether a consumer would believe that the cars were in some way connected with UMG due to the use of the famous mark.

UMG has never used its mark to identify toy cars, but it has used the mark in connection with board games, movies, video games, and even musical toothbrushes. Thus, the board said “It requires no stretch of the imagination for consumers to believe that these varied collateral goods could reasonably include toy cars.”

The board then concluded that there was a likelihood of confusion because Mattel's “ ‘toy vehicles' are sufficiently related to, and reasonably within the scope of” UMG's collateral goods that are branded with the Motown mark.

The board rejected Mattel's argument that the use of its Hot Wheel's mark negated any confusion as being “irrelevant because it is not part of the mark involved” in the dispute.

Dilution Likely

The board also determined that Mattel's use of Motown Metal was likely to result in dilution under the Trademark Dilution Revision Act, 15 U.S.C. 1125(c).

Section 1125(c)(2)(B) defines dilution or blurring as “association arising from the similarity between a mark or trade name that impairs the distinctiveness of the famous mark.”

The board said that it looks to three elements to determine dilution by blurring, from National Pork Board v. Supreme Lobster and Seafood Co., 96 USPQ2d 1479 (T.T.A.B. 2010): (1) whether the opposer's mark is famous, (2) whether the opposer's mark became famous prior to the date of the application to register the applicant's mark, and (3) whether the applicant's mark is likely to blur the distinctiveness of the opposer's famous mark.

UMG's Motown mark is famous, according to the board, after having been in use for nearly 50 year in connection with its music and entertainment services.

The second factor also clearly weighed in favor of UMG because the fame attached to the mark in the 1960s, well before Mattel began using the Motown Metal phrase.

Looking to the final factor, the board determined that “consumers encountering applicant's mark will be immediately reminded of opposer's famous Motown mark and associate the two marks.”

The board said that Mattel's use of Motown Metals was thus likely to result in dilution. It therefore sustained UMG's opposition and refused the registration.

Administrative Law Judges Peter W. Cataldo and Marc A. Bergsman joined the opinion.

UMG Recordings Inc. was represented by Russell J. Frackman of Mitchell Silderberg & Knupp, Los Angeles. Mattel Inc. was represented by Lawrence Y. Iser of Kinsella Weitzman Iser Kump & Aldisert, Santa Monica, Calif.


Opinion at http://pub.bna.com/ptcj/91176791Sept.30.pdf