Under a recent decision by the Trademark Trial and Appeal Board, Mattel won't be able to register "Motown Metal" to identify its new line of Hot Wheels toy cars, which include a 1970 Chevrolet, 1965 Ford Mustang, and a 1969 Pontiac GTO. The reason—Mattel's mark is, according to the Trademark Trial and Appeal Board, likely to cause confusion with UMG Recordings' MOTOWN trademark.
The first issue was whether a goods/place association between Detroit and Motown exists. Mattel argued that it should be allowed to use the word "Motown" since it has become synonymous for the city of Detroit. The Board wasn't impressed with this argument, finding that, while third parties had used "Motown" to refer to Detroit over the years, such uses were non-commercial or insignificant.
More importantly, the Board decided whether Mattel's "Motown Metal" line of toy cars would lead consumers to believe that the toys are somehow associated with or connected to UMG. The Board reasoned that while UMG has never made toy cars, it has used the mark in connection with a wide range of goods such as board games, video games, and even a musical toothbrush (I wish I had a MOTOWN musical toothbrush!). Given these uses, the Board concluded that consumers could reasonably believe that the "Motown Metal" toys cars are somehow connected with UMG.
What is important here is that the decision by the Trademark Trial and Appeal Board does not prevent Mattel from using "Motown Metal" but only prevents Mattel from registering this as a trademark. In order for UMG to prevent Mattel from actually using the mark is to obtain an injunction from a federal court. Will keep you posted if UMG files a lawsuit against Mattel...
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