Thanks to Greta Gerwig’s cinema adaptation of Barbie, the iconic doll from manufacturer Mattel, the summer of 2023 has been awash in a sea of pink. Mattel invested in a wide-reaching advertising and public relations promotion for the movie, spanning from Architectural Digest covering the Barbie Dream House to special filters for phones on social media to create a Barbie in your likeness. One of the unifying and distinctive features of all of these campaigns is the color Pantone 219c, or Barbie pink. A color as emblematic as Barbie pink must be trademarked, right?
Color, Trademarks, and Barbie
Colors can be trademarked in certain industries for certain purposes, so long as the color indicates the source of the product. T-Mobile holds a copyright in the telecommunications and information technology services for its magenta, Tiffany holds a trademark on its robin’s egg blue, and UPS holds a trademark on its “Pullman” brown for motor vehicles. Considering each in its respective context, it could be confusing to see a vehicle in the same color of brown as a UPS truck that does deliver packages, but for another company.
Curiously, however, Pantone 219c, or Barbie pink, is not a trademark held by Mattel. In fact, it has filed three applications, only to abandon all three. Barbie has become one of the highest-grossing movies ever, and with that success could come third parties selling related merchandise and products to make a profit off of the likeness using color. In that situation, could Mattel recover without having registered the trademark?
Mattel has defended Barbie-related intellectual property on a number of occasions. In 2022, Mattel filed a suit against Miami-based Rap Snacks for its Barbie-Que line of potato chips, based on rapper Niki Minaj. That case settled out of court. More famously, in 1997, Mattel filed a trademark infringement suit against MCA Records, the U.S. label for the Danish-Norwegian pop group Aqua, authors of the international pop hit, “Barbie Girl.” That case ended in an appeals court ruling saying Aqua’s song was a constitutionally protected parody.
Consumer Surveys and Color Trademarks
Consumer surveys are frequently used in trademark and copyright infringement proceedings. If the plaintiff does not have a trademark on the color at issue, it may still be possible to recover damages if the color is used so frequently and obviously that it acquires secondary meaning to consumers. One of the go-to ways to establish whether a color or other mark has secondary meaning is to conduct a survey. Similarly, if one side alleges consumer confusion about the origin of a product, a likelihood of confusion survey can measure the existence and extent of that confusion.
Time and Proximity
In the case of Barbie Pink, Pantone 219c, it could be possible for Mattel to recover, even though it does not have a registered trademark, if the allegedly infringing product or service is closely related enough. For example, if a doll maker were to use Pantone 219c in its packaging of another doll, Mattel could submit likelihood of confusion and secondary meaning surveys as evidence of infringement. However, proximity and timing play critical roles in whether a court could find infringement. When a product is marketed to the same consumer segment, sold in the same area of a store, and in the same types of stores, courts are much more likely to find infringement.
Another consideration in giving trademark protection to a color is the continuous or obvious use of the color. After this summer, where the whole world went Pantone 219c, consumers might be more aware of this hue as “Barbie pink.” In the 1997 MCA case, the trial court dismissed the claim that the band misappropriated the Barbie trade dress, given the popularity of the color and use. Would there be a stronger trademark case for “Barbie Pink” in 2023?
If you have questions about secondary meaning, consumer confusion, and trademarks, MMR Strategy Group can provide answers. Contact MMR Strategy Group for reliable survey research for litigation, claim substantiation, and market research.