Last month I came across this enormous, larger than life, banner advertisement hanging from the exterior of a casino on our way to the backwoods of Wisconsin.

Of course, this promotional piece took me back to my early childhood and called to mind my long lost enormous collection of Matchbox brand Hot Wheels toy cars and racetrack, but it appears there is no connection with the miniature toy vehicle maker — the winning prize was not a toy replica, but a genuine 2011 Ford Mustang.

These are the kinds of images I think of when I see the words Hot Wheels:

   

Trademark Types: Would you have cleared the above banner advertisement, as is? Why?

Marketing Types: Would you have thought to obtain legal clearance from a trademark type before the printing of the banner advertisements?

Anyone: Has Mattel established Hot Wheels to be famous for purposes of trademark dilution liability?

FYI, back in 2006, Mattel prevailed in a trademark opposition before the Trademark Trial and Appeal Board, preventing registration of HotToyz & Design in connection with magazines and online advertisements featuring high performance vehicles, decision here. As you will see, the TTAB found the Hot Wheels mark to be famous, at least for purposes of the likelihood of confusion analysis.

  • I would have absolutely checked with an attorney. Here’s the advice I would expect to get (or would give) – “You might be able to do it, but it is likely that you’ll hear from Mattel’s lawyers. If they contact you, then you will have to decide whether to back away or fight them. If you don’t stop the promotion, they may sue you. If they do, the lawsuit may cost you hundreds of thousands of dollars to defend and while you may win, you might also lose. Hopefully, you haven’t sent a bunch of emails around telling people how much you like this name and to try to make the ad look like a Mattel Hot Wheels promotion.” In my opinion, this idea isn’t so great that it is worth spending hundreds of thousands of dollars to defend. So the real choice is putting it out there and then incurring the cost of taking the promotion down and reprinting with another headline (hopefully without additional payment to Mattel) vs. coming up with something else at the outset. Being the creative guy I am, I come up with a better name for the promotion in about 10 minutes. At some future time I discuss the merits of each side of the argument over cocktails with my attorney (when the hourly bills aren’t accruing).

  • I would not have used that at all. There’s just too many risks involved. Also, there are a lot of words or combination of words you can use instead of hot wheels.