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Designer Skin LLC v. S & L Vitamins, Inc., et al.
Unauthorized internet reseller of plaintiff’s products is not guilty of trademark infringement, and does not cause actionable initial interest confusion, by using plaintiff’s trademarks in meta tags of website at which plaintiff’s and its competitors’ products are sold, and in...

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Mattel, Inc. v. JCom, Inc. and Brad McBride

97 Civ. 7191 (SS) (S.D.N.Y., September 10, 1998)

Plaintiff Mattel, Inc. ("Mattel") is the owner of various federal trademarks in the mark "Barbie" which it utilizes to market a number of toy products, including the "world-renowned" Barbie doll. Defendant JCom Inc. ("JCom") operated a website on the Internet. On this site, defendant used the term "Barbie's Playhouse" to promote the sale of adult entertainment services. The court found that the fonts used by defendant to display the name "Barbie's Playhouse" on their website, as well as the color used by defendant in the background of their site, were both virtually identical to those utilized by Mattel in the packaging of its Barbie doll products. Defendant also used "a doll-like figure similar to the form of a Barbie doll on the bottom of the website."

Plaintiff charged that defendants' conduct violated the Federal Trademark Dilution Act, 15 U.S.C. § 1125(c). The Court agreed, and permanently enjoined defendants from continuing to use plaintiff's trademark. The court also awarded plaintiff damages in an amount equal to the gross sales defendants derived from use of the mark.

To prevail on a dilution claim under the Lanham Act, a party must establish that defendant used plaintiff's famous mark in commerce in a way that would cause dilution of the mark. Dilution can be caused either by blurring or tarnishing. A mark is tarnished "by association with unwholesome goods or services."

The court found that plaintiff was the owner of the federally registered mark "Barbie" which "by any measure ... is a famous trademark." The court also found that defendants had tarnished plaintiff's mark by associating it with adult entertainment products. The court accordingly enjoined defendants from further using plaintiff's mark. To be entitled to damages for dilution, plaintiff must show that the defendant "willfully intended to trade on the [trademark] owner's reputation or to cause dilution of the famous mark." 15 U.S.C. § 1125(c)(2). The court found that defendants had intended to trade on the goodwill associated with plaintiff's Barbie mark as a result of their use on their website of fonts and colors virtually identical to those found in plaintiff's packaging. As a result, the court awarded plaintiff damages in an amount equal to the gross sales of the website. This sum was awarded in lieu of profits because of the poor nature of defendants' record keeping.

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