Does Mattel’s use of “Motown Metal” on Hot Wheels dilute Universal Music Group’s “Motown” music Trademark?

Because Mattel evidently hasn’t yet had its fill of litigation, it filed suit yesterday seeking to overturn the United States Patent and Trademark Office’s (USPTO) ruling that it could not trademark “Motown Metal” for its Hot Wheels toy cars because that would dilute Universal Music Group Recordings Inc.’s “Motown” mark.

Mattel’s pleadings alleged that it submitted a trademark application to the USPTO in November of 2005 for “Motown Metal,” the name of the new line of Hot Wheels cars that were to be an homage to the cars produced in Detroit during the 1960s and 1970s. The line included toys modeled after the 1970 Chevrolet, the 1965 Mustang, and the 1969 Pontiac GTO. Universal opposed the application on the basis that it would dilute the distinctiveness of the Universal “Motown” mark, which has been in use since 1959 on music-related goods and performances. The Trademark Trial and Appeals Board (“TTAB”) agreed with Universal and denied the application on September 30, 2011. In its decision, the TTAB found that Mattel’s “Motown Metal” and Universal’s “Motown” were “sufficiently similar that an association between them [was] established.”

While in the past the TTAB has relied upon surveys showing that at least 73 percent of the general public recognized the senior mark, here the TTAB made the dilution finding based only upon Universal’s advertising and sales revenue numbers. The board found this evidence sufficient to prove that the “Motown” mark was famous and well-known by the public.

In addition to an order overturning the board’s decision, Mattel is also wants a court order that it is entitled to register “Motown Metal” for toys. Alternatively, Mattel wants a court order preventing Universal from registering the senior “Motown” mark on toys.

The case is Mattel Inc. v. UMG Recordings Inc., case number 2:11-cv-09813, in the U.S. District Court for the Central District of California.

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