Mattel’s Barbie doll is an icon. Generations of children have been exposed to this doll, and pop culture acknowledges it as a symbol of fashion, beauty, and female empowerment. Mattel has spent over half a century connecting Barbie with the color pink, and this color plays a significant role both in the public’s image of Barbie and in differentiating Barbie from other dolls in the market. Does Mattel have the right to prevent other companies from using the color pink?
One way Mattel could prevent others from using the color pink is via trademark law. A trademark is any device that serves as an indicator of origin for goods or services. Accordingly, these devices must be distinct to gain protection as a trademark. Trademark rights grant exclusive use and protection over the mark and prevent others from using similar devices that may cause confusion in the marketplace.
Trademark law views colors skeptically for at least two reasons. First, the public is not conditioned to immediately see a color by itself as a distinguishing symbol. Second, color often serves a function in connection with products.
Color alone can acquire secondary meaning and become eligible for trademark protection if it becomes closely associated with a specific good or service. This secondary meaning occurs when consumers perceive the particular color as an identifier of the brand itself. Any color that is used in a functional capacity (such as a warning or an aesthetically pleasing color) will never gain trademark rights.
Mattel has made sure pink is more than a color Barbie wears. Mattel has used “Barbie Pink” (Pantone 219C) on Barbie’s packaging, cars, dream houses, etc. This long-standing and consistent use has allowed the public to associate this color with Mattel’s Barbie. Mattel is confident it has made this connection as it recently advertised this summer’s Barbie movie by putting up billboards that were entirely Barbie Pink except for the film’s release date of “July 21” written in white. As for functionality, Barbie Pink primarily serves as a visual identifier and decorative element for Barbie and does not provide any functional benefit to the dolls or their accessories.
If Mattel has the ability to prevent others from using Barbie Pink as a trademark, it would be limited by the likelihood of confusion factors. Chief among these is the similarity of the marks and the relatedness of the goods and services. Mattel does not own all shades of pink, at most it owns the specific Barbie Pink and those shades highly similar to it. Similarly, these rights would normally be limited to items related to dolls and accessories.
Finally, Mattel must enforce its rights if it wants to maintain these rights. Mattel recently did this when it sued a party selling “Barbie-Que” snacks, citing the snack maker’s use of “colors that are associated with the Barbie brand.” Mattel also famously sued a rock band in the late 90s over its song “Barbie Girl.” Again, Mattel accused the band of mimicking Barbie by using a color combination of white and distinctive pink colors. While Mattel lost this case on First Amendment grounds, it still demonstrates that Mattel enforces its rights in Barbie Pink.
Mattel’s rights could be enhanced by registering Barbie Pink in connection with dolls and accessories. Just like Home Depot has done with orange for home improvement store services and Owens-Corning has done with pink for fiberglass insulation, Mattel could gain the presumption of its trademark rights in Barbie Pink.
Even without a registration, Mattel has gained trademark rights in Barbie Pink and can prevent third parties from using this color in connection with items related to dolls and accessories. Through its consistent use in branding and packaging, Mattel has developed acquired distinctiveness and secondary meaning for Barbie Pink in connection with dolls and accessories. Mattel has also actively enforced its rights in Barbie Pink to maintain its exclusivity. As long as Mattel continues using and remains vigilant in protecting its Barbie Pink trademark, it can continue to leverage the color as a significant differentiating factor for the iconic Barbie brand. For what it’s worth, getting a registration in these rights may fill a hole in Mattel’s current protection.
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