SERIOUSLY, Mattel?

Received from one of my grad school professors in an email...didn't have time to search for an official press release...


Fourth Circuit Judges Let Mattel Take ''SAY'' Away
from Special Needs Company Super Duper Publications
Give Mattel $3.6 Million in Damages Too

Greenville, South Carolina (MMD Newswire) July 5, 2010 -- In a decision that turns trademark law on its head, Fourth Circuit Court of Appeals Judges Dennis Shedd, G. Stephen Agee, and Clyde Hamilton, have upheld a trial court verdict ordering special needs educational company Super Duper Publications www.superduperinc.com to pay $3.6 million to Mattel Toy Company (of which $2.6 million is attorney's fees) and to stop using the word SAY in seven of its product titles.
According to these judges (and trial court Judge Henry Floyd), the use of the word SAY by Super Duper in titles of speech and language therapy materials it makes for children with autism and other communication disorders, infringes on the trademark of a Mattel toy called SEE 'N SAY and dilutes this Mattel trademark. http://pacer.ca4.uscourts.gov/opinion.pdf/091397.U.pdf

The court reached this conclusion even though there was no evidence at trial that for more than 17 years of Super Duper's existence anyone had ever been confused between a Super Duper SAY educational product and the Mattel toy.

The court reached this conclusion even though there was no evidence that people think that the Mattel toy named SEE 'N SAY is "famous" similar to the names BARBIE or KODAK.

The court reached this conclusion even though there was no evidence that anyone ever thought of the Mattel toy when they heard the names of Super Duper's SAY educational materials like FISH AND SAY, SORT AND SAY, or SEE IT SAY IT.

Significantly, instead of issuing a published opinion in which they would have had to analyze the evidence according to established trademark law, the three judges chose to issue an "unpublished" opinion, which the court emphasized is "not binding precedent in this circuit." The result was Judges Shedd, Agee, and Hamilton rubber stamped Judge Floyd's trail court decision even though the evidence did not support this incredibly unfair result.

The trial record indicates in 1987 Super Duper began using the word SAY in titles of books, games, card decks, and other materials it created for special needs children. www.superduperinc.com For 17 years Super Duper produced SAY materials and obtained registered trademarks on its SAY products without objection from Mattel or any person and with the approval of the US Patent and Trademark Office.

In 2004, Mattel opposed Super Duper's application to register the name SORT AND SAY on a series of educational magnetic games, claiming consumers were likely to confuse these educational products with Mattel's SEE 'N SAY electronic toy. Mattel later sought to cancel three other registered SAY trademarks owned by Super Duper. The dispute ended up in federal court, where Super Duper sought protection of the court, Mattel sued Super Duper for $10 million of Super Duper's profits, claiming Super Duper had engaged in trademark infringement and trademark dilution.

For those of you who are not familiar with this toy by its name, SEE 'N SAY is an electronic toy that plays a sound when you pull a lever. ("The cow says...moooo.")
Super Duper's highly specialized materials are used by professionals in therapy to help children with autism and other communication disorders improve their speech and language skills. Mattel's toy is used as a plaything by children. The only professionals to testify at trial, two speech pathologists, stated they had used many Super Duper SAY products in therapy and had never confused them with the Mattel toy.

According to the trial testimony of Super Duper owners Thomas and Sharon Webber, "these products completely different, and the chances of anyone ever confusing them are nearly impossible". Mattel sells its toys to the general consumer market through large retail outlets like Wal-Mart and Target, while Super Duper sells its educational materials primarily to speech pathologists and special educators only through its own mail order catalog and website. The two companies never attend the same trade shows, have completely different packaging designs and logos, advertise in entirely different media outlets, and have no overlap in distributing their products.

In its appeal before Judges Shedd, Agee, and Hamilton, Super Duper argued that a proper application of the Fourth Circuit's seven-step trademark infringement analysis would lead the court to conclude that there was no likelihood of confusion between the Super Duper SAY products and the Mattel toy. In their opinion, the judges chose not to apply this seven step analysis, and instead summarily ruled that the "likelihood of confusion" issue was a matter for the jury to decide.

And that is not all.

The court went even further by upholding the jury's finding that Super Duper's use of SAY diluted the Mattel SEE 'N SAY mark. In order to reach this conclusion, the jury had to find that:

(1) the term SEE N' SAY was a "famous" mark on a level similar with marks such as BARBIE and KODAK;

(2) consumers "associate" the Super Duper SAY names with the name of the Mattel toy (even though Mattel did not present ANY evidence of this association at trial.) In other words, the judges upheld the jury finding that when average people hear the name of these seven Super Duper SAY therapy products, like its "FISH AND SAY" game or SEE IT SAY IT flip book, they immediately think of the SEE 'N SAY Mattel toy and believe that Mattel has made FISH AND SAY or SEE IT SAY IT educational materials; and

(3) Mattel was entitled to $1 million in profits that Super Duper had made on these SAY products since 1987, even though Mattel admitted the sale of Super Duper's items did not impact Mattel's sales at all.

Super Duper is appealing this decision.

Media Contact:
Name Nancy Wolfe
Email speakup@speakupforsay.com
Phone 864-243-9000