IP News

Fisher-Price Wins SJ on Trademark and Trade Dress Piracy Claims

In Pilot Corp. of America v. Fisher-Price, Inc., 04-977 (D. Conn., July 24, 2007), the District Court for the District of Connecticut granted defendant Fisher-Price's motion for summary judgment on, among other claims, plaintiff Pilot Corp. of America's ('PCA') claims for trademark and trade dress infringement. The dispute between the parties centered on the Magna Doodle ' a children's drawing toy. PCA owns a patent (the '472 patent) that covered the drawing screen used in the Magna Doodle and also owned the federally registered trademark 'Magna Doodle.'

Under a 1992 (and later amended) licensing agreement between PCA and Tyco, Tyco, and later Fisher-Price, whose parent company Mattel merged with Tyco in 1997, was granted the exclusive right to use the Magna Doodle trademark in connection with the manufacture and sale of drawing toys covered by the '472 patent. In return, Fisher-Price was obligated to purchase 100% of its annual requirement of panels for incorporation into its drawing toys bearing the 'Magna Doodle' mark. In 2003, Fisher-Price demanded a price reduction on the panels from PCA. After PCA refused, Fisher-Price failed to place a new order for panels. The agreement therefore terminated at the end of 2003. Fisher-Price then began to market and develop a replacement product called the Doodle Pro, which was nearly identical to the last version of the Magna Doodle. PCA then licensed Magna Doodle to another company that continued to sell an almost identical product as the last Fisher-Price version.

In granting summary judgment on the trade dress claim, the court first ruled that PCA did not own the trade dress that Fisher-Price had created and used to market the Magna Doodle between 1997 and 2004. The court opined that because Fisher Price had received federal copyright registration for its designs that made up at least part of the trade dress at issue, Fisher Price presumptively owned the trade dress it created and copyrighted. Further, the court ruled that the license agreement did not provide for the transfer of trade dress ownership to PCA. Finally, relying in part on the USPTO's approval of Fisher-Price's 'Doodle Pro' mark for publication and likely registration, the court determined that use of the 'Doodle Pro' was not likely to cause consumer confusion, even considering all the evidence in the light most favorable to PCA.

Matt Berkowitz is an associate in the New York office of Kenyon & Kenyon LLP.

Fisher-Price Wins SJ on Trademark and Trade Dress Piracy Claims

In Pilot Corp. of America v. Fisher-Price, Inc., 04-977 (D. Conn., July 24, 2007), the District Court for the District of Connecticut granted defendant Fisher-Price's motion for summary judgment on, among other claims, plaintiff Pilot Corp. of America's ('PCA') claims for trademark and trade dress infringement. The dispute between the parties centered on the Magna Doodle ' a children's drawing toy. PCA owns a patent (the '472 patent) that covered the drawing screen used in the Magna Doodle and also owned the federally registered trademark 'Magna Doodle.'

Under a 1992 (and later amended) licensing agreement between PCA and Tyco, Tyco, and later Fisher-Price, whose parent company Mattel merged with Tyco in 1997, was granted the exclusive right to use the Magna Doodle trademark in connection with the manufacture and sale of drawing toys covered by the '472 patent. In return, Fisher-Price was obligated to purchase 100% of its annual requirement of panels for incorporation into its drawing toys bearing the 'Magna Doodle' mark. In 2003, Fisher-Price demanded a price reduction on the panels from PCA. After PCA refused, Fisher-Price failed to place a new order for panels. The agreement therefore terminated at the end of 2003. Fisher-Price then began to market and develop a replacement product called the Doodle Pro, which was nearly identical to the last version of the Magna Doodle. PCA then licensed Magna Doodle to another company that continued to sell an almost identical product as the last Fisher-Price version.

In granting summary judgment on the trade dress claim, the court first ruled that PCA did not own the trade dress that Fisher-Price had created and used to market the Magna Doodle between 1997 and 2004. The court opined that because Fisher Price had received federal copyright registration for its designs that made up at least part of the trade dress at issue, Fisher Price presumptively owned the trade dress it created and copyrighted. Further, the court ruled that the license agreement did not provide for the transfer of trade dress ownership to PCA. Finally, relying in part on the USPTO's approval of Fisher-Price's 'Doodle Pro' mark for publication and likely registration, the court determined that use of the 'Doodle Pro' was not likely to cause consumer confusion, even considering all the evidence in the light most favorable to PCA.

Matt Berkowitz is an associate in the New York office of Kenyon & Kenyon LLP.