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Barbie comes out swinging

Internet attorney Eric J. Sinrod explains why the doll's corporate parent decided it had to take on a China-based cybersquatter.

It is not a good idea to offend Barbie.

Case in point--Mattel has sued a company called Global China Networks for infringing on the Barbie trademark. The dispute stems from GCN's use of the domain name, a pornographic Web site.

Mattel accuses GCN of cybersquatting, trademark dilution, trademark infringement and unfair competition. It seeks an injunction preventing GCN from using Mattel's Barbie trademarks. It also asks the court to transfer the domain name and award general, treble, statutory and punitive damages.

In its lawsuit Mattel details how it built up the favorable public association of the Barbie trademarks. Mattel was founded in 1945 by Elliot and Ruth Handler and Harold "Matt" Mattson. The name of the company was created by incorporating the names of the two founders: "MATT"-son and "EL"-liot.

Starting in the Handlers' garage, Mattel vastly expanded its operations after World War II. As its reputation spread for producing high-quality toys, the company thrived. In 1959, Ruth Handler created the Barbie doll, which was named after Elliot and Ruth's daughter, Barbara. The concept for the doll came about after Ruth observed that her daughter preferred to play with paper cutouts of adult female fashion dolls rather than with baby dolls.

Mattel has now sold Barbie dolls for more than 40 years. And, of course, Mattel markets other dolls and products as part of its Barbie doll line. (Let's not forget Barbie's sister Skipper and their respective boyfriends, Ken and Kevin.)

Barbie dolls are so popular that annual sales exceed $1.6 billion. According to Mattel, two Barbie dolls are sold somewhere in the world every second and a typical American girl, between the ages of 3 and 11 years, owns an average of eight Barbie dolls. Since 1959, Mattel has sold more than one billion Barbie dolls worldwide.

Mattel has registered a number of Barbie trademarks with the United States Patent and Trademark Office to protect its rights in its Barbie marks. Mattel has used the Barbie trademarks to capitalize on the tremendous goodwill it has achieved through its Barbie products. The last thing management wants is for another company to unfairly benefit from Mattel's Barbie trademarks.

Then along comes GCN and it registers the domain name for a pornographic Web site, according to Mattel. No surprise, then, when Mattel filed a federal lawsuit. In addition to its pursuit of injunctive relief and damages, Mattel also wanted to send a message to other potential infringers: steer clear of Mattel's trademarks or else.

Mattel has invested a lot to build up the goodwill established in its trademarks. That's why it's keen to prevent other companies from confusing the public about the source of products. The last thing Mattel wants is to see its trademarks diluted or tarnished. In this case, if the public gets confused and starts to associate Mattel or its products with pornography, the resulting damage to its reputation would be severe.

Faced with Mattel's lawsuit, perhaps GCN will voluntarily transfer the offending domain name, stop using Mattel's trademarks and try to resolve the dispute informally. On the other hand, GCN might claim it is entitled to use "Barbie" in the domain name because Barbie is a common name. GCN otherwise has a legitimate purpose for using that word within its domain name.

However, given Mattel's lengthy use of the Barbie trademark in commerce for decades and the overwhelming strength of the mark and association with Mattel's products, it is very possible that any defense of GCN in court would not gain traction.

We shall see.