## Facts

- Mattel owned and marketed the HOT WHEELS brand of miniature toy vehicles since 1968 and used federally registered flame logo designs in connection with that brand.
- Jada sold miniature toy vehicles and, from 2001 to 2004, marketed a line of toy trucks under the federally registered mark HOT RIGZ.
- Jada also used the mark OLD SKOOL and sued Mattel alleging Mattel’s OLD SCHOOL and NEW SCHOOL product lines infringed OLD SKOOL.
- Mattel counterclaimed, alleging Jada’s HOT RIGZ infringed and diluted Mattel’s HOT WHEELS marks and that Jada infringed Mattel’s copyrights relating to artwork and/or packaging.
- The district court granted summary judgment against Jada on its OLD SKOOL claims, and granted summary judgment for Jada on Mattel’s trademark infringement, dilution, and copyright counterclaims.
- Mattel appealed the adverse summary judgment rulings on its counterclaims.

## Issues

1. Whether summary judgment for Jada on Mattel’s trademark infringement counterclaims was improper because the likelihood-of-confusion analysis relied mainly on mark dissimilarity and did not weigh all relevant factors.
2. Whether summary judgment for Jada on Mattel’s dilution counterclaim was improper because the “identical or nearly identical” similarity question presented triable fact disputes.
3. Whether summary judgment for Jada on Mattel’s copyright counterclaims was improper because the record contained genuine disputes over copying and substantial similarity.

## Decision

- The Ninth Circuit reversed summary judgment for Jada on Mattel’s trademark infringement counterclaims and remanded.
- The Ninth Circuit reversed summary judgment for Jada on Mattel’s dilution counterclaim and remanded.
- The Ninth Circuit reversed summary judgment for Jada on Mattel’s copyright counterclaims and remanded.
- The court held the district court misapplied the infringement framework and that disputed material facts precluded summary judgment on infringement, dilution, and copyright.

## Legal Principles

- Likelihood of confusion in trademark infringement requires weighing multiple factors; a court generally may not treat a single factor (including mark dissimilarity) as dispositive where other evidence could support confusion.
- Similarity is assessed by the marks’ overall commercial impressions, including sight, sound, meaning, and relevant presentation such as logos, packaging, and design context.
- Under Ninth Circuit dilution law (as applied in this case), the junior mark must be “identical or nearly identical” to a famous mark, but whether that standard is met can present a fact question when shared visual and conceptual elements support competing inferences.
- Summary judgment is improper when evidence, viewed in favor of the nonmovant, would permit a reasonable jury to find actionable trademark confusion, actionable dilution, or copyright infringement; substantial similarity and related questions are often fact-intensive for graphic and packaging works.

## Conclusion

The Ninth Circuit reversed and remanded because the district court effectively short-circuited the confusion analysis and because the record contained triable disputes over whether Jada’s HOT RIGZ branding and presentation could confuse consumers, dilute Mattel’s famous HOT WHEELS marks, and infringe Mattel’s copyrighted artwork or packaging.


Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628 (9th Cir. 2008)