Case 2:22-cv-05702-FMO-MAA Document 1 Filed 08/11/22 Page 1 of 22 Page ID #:1
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`VENABLE LLP
`Lee S. Brenner (SBN 180235)
`lsbrenner@venable.com
`2049 Century Park East, Suite 2300
`Los Angeles, California 90067
`Telephone: (310) 229-9900
`Facsimile: (310) 229-9901
`Meaghan H. Kent (pro hac vice pending)
`mhkent@venable.com
`Alicia M. Sharon (SBN 323069)
`asharon@venable.com
`600 Massachusetts Ave.
`Washington, D.C. 20001
`Telephone: (202) 344-4000
`Facsimile: (202) 344-8300
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`Attorneys for Plaintiff MATTEL, INC.
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`UNITED STATES DISTRICT COURT
`FOR THE CENTRAL DISTRICT OF CALIFORNIA
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`MATTEL, INC., a Delaware
`corporation,
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`Plaintiff,
`
`v.
`RAP SNACKS, INC., a Florida
`corporation, and DOES 1 through 10,
`Defendants.
`
`Case No. 2:22-CV-5702
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`PLAINTIFF MATTEL, INC.’S
`COMPLAINT FOR:
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`(1) FEDERAL TRADEMARK
`INFRINGEMENT (15 U.S.C. § 1114)
`(2) FEDERAL UNFAIR
`COMPETITION AND FALSE
`DESIGNATION OF ORIGIN (15
`U.S.C. § 1125(a))
`(3) FEDERAL TRADEMARK
`DILUTION (15 U.S.C. § 1125(c))
`(4) STATE UNFAIR
`COMPETITION (CAL. BUS. &
`PROF. CODE § 17200)
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`JURY TRIAL DEMANDED
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`COMPLAINT
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`Case 2:22-cv-05702-FMO-MAA Document 1 Filed 08/11/22 Page 2 of 22 Page ID #:2
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`Plaintiff Mattel, Inc. (“Mattel” or “Plaintiff”) for its complaint against Rap
`Snacks, Inc. (“Rap Snacks” or “Defendant”) and DOES 1-10, hereby alleges as
`follows:
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`NATURE OF THE ACTION
`1. For decades, Mattel’s Barbie has been one of the world’s most well-
`known and recognizable brands. From Barbie’s origins as America’s first fashion
`doll to the expansive product line of today, which includes dolls inspired by Rosa
`Parks, Jane Goodall, and Eleanor Roosevelt, among other role models, Barbie has
`inspired the limitless potential in generations of children through play. Barbie has
`also become a growing franchise and popular culture phenomenon outside of the
`toy aisle, from an established array of Barbie-branded consumer products, to a
`broad range of popular animated television series and specials, and more recent
`initiatives like the upcoming live-action Barbie theatrical film, all produced or
`licensed and supported by Mattel.
`2. Mattel encourages people of all ages and backgrounds to talk about
`and share their Barbie experiences, and to celebrate their enthusiasm for Barbie.
`Occasionally, however, some put profits ahead of play and seek commercial gain
`by manufacturing, promoting and selling Barbie-branded products without Mattel’s
`permission, in a way that harms and dilutes the famous and distinctive Barbie
`brand. This is such a case.
`Rap Snacks made the deliberate and calculated choice to launch a new
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`product line using Mattel’s famous BARBIE trademark. That choice, made without
`any prior notice to Mattel, was unlawful. As a result, Mattel has been forced to
`bring this lawsuit to defend its rights to the BARBIE brand because Defendant Rap
`Snacks impermissibly traded off, and continues to trade off, the value and goodwill
`of Mattel’s famous trademark.
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`VENABLE LLP
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`Case 2:22-cv-05702-FMO-MAA Document 1 Filed 08/11/22 Page 3 of 22 Page ID #:3
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`4. Without Mattel’s authorization or prior knowledge, Rap Snacks
`purposely, and with much fanfare, launched its new line of potato chips using
`Mattel’s BARBIE trademark on its packaging and advertising, including the
`stylized BARBIE trademark. Defendant’s blatant and intentional use of Mattel’s
`trademark will cause consumers to associate the Defendant’s products with Mattel
`and its BARBIE brand, and that false association is enhanced even further by
`Defendant’s use of imagery and colors that are associated with the BARBIE brand.
`On information and belief, the association is so evident that upon seeing the
`packaging, representatives for Defendant’s celebrity partner queried whether Rap
`Snacks had obtained permission from Mattel. Indeed, Rap Snacks never requested
`or received any such permission from Mattel. Rap Snacks proceeded to launch its
`product line anyway using the packaging set forth below:
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`Defendant flooded social media and marketing channels with a
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`massive, unauthorized nationwide promotional launch of potato chips prominently
`featuring Mattel’s Barbie trademark, including on a New York City billboard,
`promotional potato chip giveaways at a music festival in New Orleans, an
`exclusive article announcing the launch in People magazine, and continual posts
`and videos across multiple social media platforms including, Facebook, Twitter,
`Instagram, LinkedIn, and TikTok. By way of example only, Rap Snacks’ launch
`included the following:
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`COMPLAINT
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`Case 2:22-cv-05702-FMO-MAA Document 1 Filed 08/11/22 Page 4 of 22 Page ID #:4
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`Billboard in New York City:
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`Upon learning of this infringement, Mattel immediately engaged with
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`Defendant to attempt to resolve this matter. Defendant, however, refused to cease
`use of the BARBIE trademark and issued no corrective advertising, thereby forcing
`Mattel to bring this lawsuit as a last resort to protect its rights and prevent further
`consumer confusion.
`This action seeks judgment, damages and injunctive relief for
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`Defendant’s willful infringement of Mattel’s famous BARBIE trademark, for
`unfair competition and false designation of origin, trademark dilution, and unfair
`competition under California state law. Mattel also seeks its attorneys’ fees and
`costs herein, as well as an accounting of Rap Snacks’ profits resulting from its
`decision to infringe Mattel’s trademark.
`JURISDICTION AND VENUE
`This action arises under the Lanham Act, 15 U.S.C. §§ 1051 et seq
`8.
`and contains a related California statutory claim. This Court has subject matter
`jurisdiction over this action pursuant to 15 U.S.C. § 1121 and 28 U.S.C. §§ 1331
`and 1338, as this is an action arising under the laws of the United States and
`relating to trademarks. This Court has supplemental jurisdiction over the state law
`claim pursuant to 28 U.S.C. § 1367, as that claim is part of the same case or
`controversy as the federal claims alleged herein.
`This Court has personal jurisdiction over Defendant Rap Snacks
`9.
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`COMPLAINT
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`Case 2:22-cv-05702-FMO-MAA Document 1 Filed 08/11/22 Page 5 of 22 Page ID #:5
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`because, among other things, Rap Snacks is doing business in the state of
`California. Indeed, Rap Snacks purposefully directs and conducts business in
`California generally and specifically as to the product at issue, the acts of
`infringement complained of in this action took place in the state of California, and
`the acts of infringement complained of in this action involve Rap Snacks entering
`into a contract with a resident of California. In fact, Rap Snacks’ own website
`reveals that its products are available in stores in California, including in this
`judicial district. See https://www.rapsnacks.net/pages/store-locator.
`10. Defendant Rap Snacks also knowingly directed tortious acts at Mattel
`in California, and has committed tortious acts that it knew would cause injury to
`Mattel in California.
`11. Venue is proper in this district pursuant to 28 U.S.C § 1391(b)
`because a substantial part of the events that give rise to this action occurred in this
`judicial district.
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`THE PARTIES
`12. Mattel is a corporation organized and existing under the laws of
`Delaware and has its principal place of business at 333 Continental Boulevard,
`TWR 15-1, El Segundo, California 90245.
`13. Upon information and belief, Defendant Rap Snacks is a corporation
`organized and existing under the laws of Florida and has its principal place of
`business at 150 SE 2nd Avenue, Suite PH6, Miami, Florida 33131.
`14. Mattel is currently unaware of the identities of defendants Does 1-10,
`and therefore, sues such defendants by such pseudonyms. Upon information and
`belief, discovery will reveal the true identities and specific conduct of those
`defendants and Mattel will then amend this Complaint to identify those defendants
`by name. Mattel alleges that Does 1-10 participated in the misconduct alleged
`herein, and are therefore liable for the same. Mattel alleges that, at all times, each
`Doe defendant was acting as an agent, partner, joint venturer, an integrated
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`enterprise or alter ego of each of the other defendants and each were co-
`conspirators with respect to the wrongful conduct alleged herein so that each is
`responsible for the acts of the other. Moreover, Does 1-10 not only participated in
`the infringing acts alleged herein, but each was a moving, active and conscious
`force behind Rap Snacks’ and the other defendants’ decision to engage in the
`infringing acts, or otherwise caused the infringement by Rap Snacks to occur.
`GENERAL ALLEGATIONS
`Mattel’s Famous BARBIE Trademark
`15. Since 1959, Mattel has used BARBIE as a source identifier for its line
`of dolls, becoming one of the most popular and valuable trademarks in the world
`(“BARBIE trademark”). Over the ensuing six decades, Mattel has used the
`BARBIE trademark on thousands of different BARBIE-branded products, and
`BARBIE has become a household name and famous trademark. Mattel offers and
`sells its products worldwide through major retailers, online marketplaces, and its
`own website.
`16. On the strength of this strong consumer recognition, the BARBIE
`trademark also long ago expanded beyond toys and into a broad range of
`commercial and consumer products, including, but not limited to, clothing,
`footwear, cosmetics, books, movies, games, puzzles, jewelry, bags, backpacks,
`bedding, kitchenware, and food items.
`In fact, through licensees of the famous BARBIE brand, Mattel
`17.
`currently sells food and snack products under the BARBIE trademark, including
`but not limited to significant sales of pasta, candy, cookies, drinks, and fruit
`snacks.
`18. Mattel has used a handful of variations of its stylized trademark over
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`Case 2:22-cv-05702-FMO-MAA Document 1 Filed 08/11/22 Page 7 of 22 Page ID #:7
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`its decades of use, including:
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`19. Not only has Mattel gained significant common law trademark and
`other rights in its BARBIE-branded products through use, advertising, and
`promotion, but Mattel has also protected these valuable rights by filing for and
`obtaining federal trademark registrations.
`20. Mattel owns dozens of United States Trademark Registrations for its
`BARBIE and BARBIE-formative marks, covering a broad range of goods and
`services, and including word marks and its stylized mark.
`21. For example, Mattel owns registrations for BARBIE covering “time
`pieces, specifically wrist watches” (U.S. Reg. No. 0772298), “insulating
`containers, specifically, vacuum bottles for preserving food and drinks” (U.S. Reg.
`No. 0813733), “hand mirrors” (U.S. Reg. No. 0816601), “purses and cosmetic
`cases” (U.S. Reg. No. 1795876), “bandages for skin wounds” (U.S. Reg. No.
`1795564), “facial tissues and stickers for fingernails” (U.S. Reg. No. 1769285),
`and “hair bands” (U.S. Reg. No. 2203306). Attached at Exhibit A hereto is a
`schedule of Mattel’s U.S. registrations for BARBIE and BARBIE-formative
`marks, many of which are incontestable pursuant to 15 U.S.C. § 1065.
`22. Notably, Mattel owns a trademark registration for the BARBIE word
`mark (U.S. Reg. No. 2678386) covering, among other things, “Edible cake
`decorations, candy, cookies, chocolate candy” in International Class 30.
`23. Mattel also owns a trademark application for the BARBIE word mark
`(U.S. Serial No. 97530796) covering “Fruit-based snack food” in International
`Class 29. This application asserts a first use date of February 13, 2017.
`24. Mattel’s BARBIE trademark is also considered “famous” within the
`meaning of Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c). In fact, now-
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`Case 2:22-cv-05702-FMO-MAA Document 1 Filed 08/11/22 Page 8 of 22 Page ID #:8
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`Justice Sonia Sotomayor wrote that “by any measure – the world-known BARBIE
`is a ‘famous’ trademark under the Federal Anti-Dilution Act.”1
`25. Mattel has spent substantial time, money, and resources in building up
`and developing consumer recognition, awareness, and goodwill in its BARBIE
`trademark.
`26. Mattel has spent years marketing, promoting, and advertising its
`BARBIE branded products through multiple channels worldwide, including on
`television, and through print and internet-based advertising.
`27. The success of the BARBIE trademark is also due to Mattel’s high-
`quality designs, materials, and processes in developing and creating BARBIE-
`branded products, as well as its selective partnerships with manufacturers,
`distributors, and other brands.
`28. The BARBIE trademark’s fame is supported by its licensed use in
`films and popular media. For example, a live-action film based on the BARBIE
`fashion doll line is set for release in 2023 and is already receiving significant
`attention.2 In addition, BARBIE has appeared in other films, including the Toy
`Story franchise3; has been depicted in a painting by the artist Andy Warhol4; has
`landed the cover of Time Magazine5; and is part of the Smithsonian Institution’s
`collection in the National Museum of American History.6
`29. The fame of the BARBIE trademark also extends to the internet and
`social media. The BARBIE Instagram account (@barbie) boasts over 2.1 million
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`1 Mattel, Inc. v. Jcom, Inc., 1998 U.S. Dist. LEXIS 16195, *9 (S.D.N.Y. Sep. 10, 1998).
`2 Ranyechi Udemezue, Everything You Need To Know About Greta Gerwig’s Barbie, Vogue,
`July 14, 2022, https://www.vogue.com/article/everything-you-need-to-know-greta-gerwig-
`barbie.
`3 TOY STORY 2 (Walt Disney Pictures 1999), TOY STORY 3 (Walt Disney Pictures 2010).
`4 Hannah Moore, Why Warhol painted Barbie, BBC, Oct. 1, 2015,
`https://www.bbc.com/news/magazine-34407991.
`5 INSIDE THE BIGGEST CHANGE IN BARBIE’S 57-YEAR HISTORY- AND WHAT IT
`SAYS ABOUT AMERICAN BEAUTY DEALS, TIME, http://time.com/barbie-new-body-
`cover-story/.
`6 SMITHSONIAN INSTITUTION, https://www.si.edu/object/nmah_1155897 (last visited July
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`Case 2:22-cv-05702-FMO-MAA Document 1 Filed 08/11/22 Page 9 of 22 Page ID #:9
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`followers7 and @barbiestyle has 2.2 million8; the BARBIE YouTube channel has
`over 3.5 billion views9; and the BARBIE TikTok account has amassed over 4.5
`million likes on its posts.10
`30. As a result of Mattel’s efforts, its BARBIE trademark has achieved
`near universal recognition among the general consuming public in the United
`States and consumers have come to associate BARBIE exclusively with Mattel.
`31. Mattel has gone to great lengths to protect its interest in its valuable
`BARBIE trademark. No one other than Mattel and its authorized licensees and
`distributors is authorized to manufacture, import, export, advertise, offer for sale,
`or sell any goods utilizing the BARBIE trademark without the express permission
`of Mattel.
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`Defendant Rap Snacks’ Infringing Activities
`32. Upon information and belief, Defendant Rap Snacks is a snack food
`company that sells chips, popcorn, cheese puffs, noodles, and drinks.
`33. Upon information and belief, Rap Snacks markets, promotes,
`advertises, and sells its snack food products through physical retailers, including
`but not limited to, Walmart, Kroger, 7-Eleven, Circle K, Sav A Lot, and other
`retail stores throughout the United States, including California.
`34. Rap Snacks also markets, promotes, advertises, and sells its snack
`food products through multiple online channels, including but not limited to social
`media (e.g., Instagram, Facebook, Linkedin, Twitter, and TikTok), as well as
`Amazon, and on its website, https://www.rapsnacks.net/.
`With Much Fanfare, Rap Snacks Launches Its New Product Line by
`Intentionally Infringing Mattel’s Trademark and Causing Actual Confusion
`35. Without permission or consent from Mattel, and despite having actual
`notice of Mattel’s rights in its BARBIE trademark, on or around June 30, 2022,
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`7 @barbie, Instagram (July 26, 2022, at 3:15 PM), https://www.instagram.com/barbie/?hl=en.
`8 @barbiestyle, Instagram (Aug. 1, 2022, at 11:50 AM), https://www.instagram.com/barbiestyle.
`9 Barbie, Barbie, YouTube (July 26, 2022), https://www.youtube.com/c/barbie/about.
`10 @barbie, TikTok (July 26, 2022), https://www.tiktok.com/@barbie.
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`Case 2:22-cv-05702-FMO-MAA Document 1 Filed 08/11/22 Page 10 of 22 Page ID #:10
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`Rap Snacks announced the launch of a new line of potato chips featuring BARBIE
`prominently on packaging.
`Rap Snacks Product Packaging:
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`36. Not only does the name of Rap Snacks’ product packaging wholly
`incorporate Mattel’s BARBIE trademark, but the logo is confusingly similar to the
`current BARBIE logo, and virtually identical to another version of the BARBIE
`logo used by Mattel, demonstrating Rap Snacks’ blatant copying of Mattel’s
`Barbie logos:
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`Rap Snacks’ Infringing
`Stylized Use
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`Mattel’s Current Stylized
`Logo
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`Mattel’s Alternative
`Stylized Logo
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`Case 2:22-cv-05702-FMO-MAA Document 1 Filed 08/11/22 Page 11 of 22 Page ID #:11
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`In addition, Rap Snacks use of the BARBIE trademark in connection
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`with snack food items is made even more confusing to consumers by the fact that
`Mattel advertises and sells its own line of snack foods—such as pasta, candy,
`cookies, drinks, and fruit snacks—using a virtually identical stylized BARBIE
`trademark, as shown below.
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`38. Rap Snacks’ promotional campaign and use of BARBIE for its chip
`venture has been extensive, involving New York City billboards, promotional chip
`giveaways at a music festival in New Orleans, an exclusive article announcing the
`launch in a popular national magazine, and continual posts and videos across
`multiple social media platforms (e.g., Facebook, Twitter, Instagram, LinkedIn, and
`TikTok).
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`Rap Snacks’ Promotional Post on Instagram:
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`Rap Snacks’ Photos of Chip Giveaway At New Orleans Festival on Facebook:
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`39. Rap Snacks’ announcement has also been picked up by a variety of
`other media outlets.
`40. Rap Snacks’ promotional campaign has also promised special
`contests, exclusive content for VIP members such as early access to preview new
`flavors and packaging designs, as well as product ordering:
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`41. Rap Snacks’ unlawful and infringing use has already led to actual
`consumer confusion with consumers falsely believing that Mattel has authorized
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`Case 2:22-cv-05702-FMO-MAA Document 1 Filed 08/11/22 Page 13 of 22 Page ID #:13
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`this use of its BARBIE trademark, and the continued use is likely to cause
`continued consumer confusion.
`In preparation for the launch of the above referenced chips, on April
`42.
`4, 2022, James Lindsay, the Chief Executive Officer of Rap Snacks, filed with the
`United States Patent and Trademark Office (“USPTO”) an intent-to-use trademark
`application to register the word BARBIE-QUE (U.S. App. No. 97/346,582) (the
`“BARBIE-QUE Application”) in connection with a wide variety of food products
`and beverages in International Classes 29 and 30, including but not limited to,
`chips, cookies, fruit-based snack food, candy-coated popcorn, chocolate candies,
`and snacks.
`43. Upon learning of the infringement, Mattel contacted Rap Snacks
`directly regarding the use and attempted registration of BARBIE-QUE, notifying
`Defendant that the use and attempted registration of BARBIE-QUE constitutes
`trademark infringement, and demanding that Rap Snacks immediately cease use of
`BARBIE on or in connection with its products, and withdraw or abandon the
`BARBIE-QUE Application. To date, Rap Snacks has failed to do so, and has made
`no effort to correct the misimpressions it foisted on the public. Rather, having
`benefitted from launching its new product line by infringing Mattel’s trademark,
`on information and belief, Rap Snacks has chosen to continue to use BARBIE on
`and in connection with its new product line.
`FIRST CAUSE OF ACTION
`(Federal Trademark Infringement under 15 U.S.C. § 1114)
`(Against Defendant Rap Snacks & Does 1-10)
`44. Mattel repeats and realleges the foregoing paragraphs as if fully set
`forth herein.
`45. Mattel owns numerous valid and protectable federal trademark
`registrations for BARBIE, as shown at Exhibit A hereto. The BARBIE marks are
`distinctive by virtue of their inherent and acquired distinctiveness, extensive use,
`
`12
`COMPLAINT
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`310-229-9900
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`LOS ANGELES, CA 90067
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`2049 CENTURY PARK EAST, SUITE 2300
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`VENABLE LLP
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`Case 2:22-cv-05702-FMO-MAA Document 1 Filed 08/11/22 Page 14 of 22 Page ID #:14
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`prominence in intended and unsolicited media attention, and publicity.
`46. As described in more detail herein, Defendant has begun promoting,
`advertising and distributing chips featuring the BARBIE trademark in the United
`States.
`47. Defendant’s use of BARBIE, including its use of the BARBIE-QUE
`branding, is confusingly similar to Mattel’s BARBIE trademark in sound,
`appearance, and overall commercial impression as it incorporates the entirety of
`Mattel’s BARBIE mark. Rap Snacks’ use of the stylized BARBIE branding on
`packaging is in fact virtually identical to Mattel’s stylized BARBIE mark. Having
`engaged in this unlawful behavior, Defendant has evidenced its clear intent to
`cause confusion, and it cannot now avoid the claims by minimizing its unlawful
`use.
`
`In addition, the chips promoted by Rap Snacks and associated with
`48.
`Mattel’s BARBIE brand are highly related to the snack food products offered by
`Mattel under its BARBIE trademark.
`49. Upon information and belief, consumers who encounter Rap Snacks’
`advertising of its chips are likely to believe that this product is sourced from or is
`affiliated with Mattel. Rap Snacks’ use of BARBIE and BARBIE-QUE in the
`manner described herein has already caused and is likely to cause further
`confusion, mistake, or deception as to the affiliation, connection, or association of
`Rap Snacks with Mattel, and/or as to the origin, sponsorship, or approval of Rap
`Snacks’ chips by Mattel. Such use constitutes trademark infringement in violation
`of 15 U.S.C. § 1114(1)(a).
`50. Rap Snacks’ conduct is without Mattel’s permission or authority.
`Prior to beginning its use, Rap Snacks had actual knowledge of Mattel’s senior
`rights in its BARBIE trademark. As a result, Rap Snacks has committed its
`infringement with full knowledge of Mattel’s rights in the BARBIE trademark and
`has willfully, deliberately, and maliciously engaged in the described acts with an
`
`13
`COMPLAINT
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`310-229-9900
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`LOS ANGELES, CA 90067
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`2049 CENTURY PARK EAST, SUITE 2300
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`VENABLE LLP
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`

`

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`Case 2:22-cv-05702-FMO-MAA Document 1 Filed 08/11/22 Page 15 of 22 Page ID #:15
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`intent to injure Mattel and to deceive the public.
`51. Rap Snacks has traded and is trading on, and has gained and is
`gaining public acceptance and other benefits from, the favorable reputation and
`valuable goodwill of Mattel’s BARBIE trademark, which have accordingly been
`placed at risk and damaged by Rap Snacks’ unlawful actions and conduct.
`52. Upon information and belief, Rap Snacks has profited from this
`infringement.
`53. This is an exceptional case under 15 U.S.C. § 1117(a).
`54. Rap Snacks’ and Does 1-10’s willful conduct has caused damage to
`Mattel in an amount to be determined at trial, and unless restrained, will continue
`to cause serious and irreparable injury for which there is no adequate remedy at
`law.
`
`In light of the foregoing, Mattel is entitled to injunctive relief, and to
`55.
`recover from Rap Snacks and Does 1-10 all damages, including lost profits and
`attorneys’ fees and costs of corrective advertising to mitigate damages, that Mattel
`has sustained and will sustain as a result thereof, in an amount not yet known, but
`which circumstances warrant enhancement pursuant to 15 U.S.C. § 1117(a), as
`well as the costs of this action. Mattel is also entitled to an accounting of Rap
`Snacks’ and Does 1-10’s profits resulting from its Lanham Act violations.
`SECOND CAUSE OF ACTION
`(Federal Unfair Competition and False Designation of Origin under 15 U.S.C.
`§ 1125(a))
`(Against Defendant Rap Snacks & Does 1-10)
`56. Mattel repeats and realleges the foregoing paragraphs as if fully set
`forth herein.
`57. As described in more detail in the foregoing paragraphs, Defendant
`Rap Snacks has begun promoting, advertising and distributing chips featuring the
`BARBIE trademark in the United States.
`
`14
`COMPLAINT
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`310-229-9900
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`LOS ANGELES, CA 90067
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`2049 CENTURY PARK EAST, SUITE 2300
`
`VENABLE LLP
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`

`

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`Case 2:22-cv-05702-FMO-MAA Document 1 Filed 08/11/22 Page 16 of 22 Page ID #:16
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`58. Upon information and belief, consumers who encounter Defendant’s
`use and advertising of BARBIE, including the name of defendant’s products that
`incorporate Mattel’s BARBIE trademark, are likely to believe that this product is
`sourced from or is affiliated with Mattel. Thus, Rap Snacks use of BARBIE,
`including in the BARBIE-QUE name, in connection with chips, has already caused
`and is likely to cause further confusion, mistake, or deception as to the affiliation,
`connection, or association of Rap Snacks with Mattel, or as to the origin,
`sponsorship, or approval of Rap Snacks’ chips by Mattel. Such use constitutes
`unfair competition and false designation of origin in violation of 15 U.S.C. §
`1125(a).
`59. Upon information and belief, Rap Snack’s conduct was designed and
`undertaken for the purpose of unfairly competing with Mattel.
`60. Rap Snacks’ conduct is without Mattel’s permission or authority.
`Prior to beginning its use, Rap Snacks had actual knowledge of Mattel’s senior
`rights in its BARBIE trademark. As a result, Rap Snacks has committed its
`infringement with full knowledge of Mattel’s rights in the BARBIE trademark and
`has willfully, deliberately, and maliciously engaged in the described acts with an
`intent to injure Mattel and to deceive the public.
`61. Rap Snacks has traded and is trading on, and has gained and is
`gaining public acceptance and other benefits from, Mattel’s favorable reputation
`and valuable goodwill, which have accordingly been placed at risk and damaged
`by Rap Snacks’ illegal actions and conduct.
`62. Upon information and belief, Rap Snacks and Does 1-10 have each
`profited from this unfair competition and false designation of origin.
`63. This is an exceptional case under 15 U.S.C. § 1117(a).
`64. Rap Snacks’ willful conduct has caused damage to Mattel in an
`amount to be determined at trial, and unless restrained, will continue to cause
`serious and irreparable injury for which there is no adequate remedy at law.
`
`15
`COMPLAINT
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`310-229-9900
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`LOS ANGELES, CA 90067
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`2049 CENTURY PARK EAST, SUITE 2300
`
`VENABLE LLP
`
`

`

`
`
`Case 2:22-cv-05702-FMO-MAA Document 1 Filed 08/11/22 Page 17 of 22 Page ID #:17
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`In light of the foregoing, Mattel is entitled to injunctive relief, and to
`65.
`recover from Rap Snacks and Does 1-10 all damages, including lost profits and
`attorneys’ fees, that Mattel has sustained and will sustain as a result thereof, in an
`amount not yet known, but which circumstances warrant enhancement pursuant to
`15 U.S.C. § 1117(a), as well as the costs of this action. Mattel is also entitled to an
`accounting of Rap Snacks’ and Does 1-10’s profits resulting from its Lanham Act
`violations.
`
`THIRD CAUSE OF ACTION
`(Federal Dilution under 15 U.S.C. § 1125(c))
`(Against Defendant Rap Snacks & Does 1-10)
`66. Mattel repeats and realleges the foregoing paragraphs as if fully set
`forth herein.
`67. Mattel’s BARBIE trademark is “famous” within the meaning of
`Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c), in that it is widely
`recognized by the general consuming public of the United States as a designation
`of source of Mattel’s products, including snack products, as set forth above in
`paragraphs 16 through 35.
`68. The BARBIE trademark is distinctive by virtue of its inherent and
`acquired distinctiveness, extensive use, prominence in intended and unsolicited
`media attention, and publicity. Indeed, numerous articles have recognized
`BARBIE as “famous.” As a result of the substantial inherent and acquired
`distinctiveness, as well as Mattel’s widespread use of BARBIE, Mattel’s BARBIE
`trademark has become a strong and widely respected symbol for Mattel and the
`related products it represents.
`69. As described in more detail in the foregoing paragraphs, through its
`promotion, advertising and distribution of chips featuring the BARBIE trademark,
`Rap Snacks has used “BARBIE” in connection with chips in commerce, and such
`use and promotion began long after Mattel’s BARBIE trademark became famous.
`
`16
`COMPLAINT
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`310-229-9900
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`LOS ANGELES, CA 90067
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`2049 CENTURY PARK EAST, SUITE 2300
`
`VENABLE LLP
`
`

`

`
`
`Case 2:22-cv-05702-FMO-MAA Document 1 Filed 08/11/22 Page 18 of 22 Page ID #:18
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`70. Rap Snacks’ use of BARBIE, including in the BARBIE-QUE name,
`as described above is likely to cause dilution by blurring because the association
`among ordinary consumers arising from Rap Snacks’ use of BARBIE in
`connection with chips or snack foods is likely to impair the distinctiveness of
`Mattel’s famous BARBIE trademark in violation of 15 U.S.C. § 1125(c)(2)(B).
`71. Rap Snacks’ unauthorized use of BARBIE, including in its BARBIE-
`QUE brand, as described above is likely to cause dilution by tarnish