Mattel Inc, one of the world’s largest toy companies, wants a Canadian artist to give up rights to a five-year-old trademark in order for the company to register the name “Caroline” in Canada for an American Girl doll, the CBC reports.
Carrolyne Yardley from Victoria, British Columbia, who trademarked her first name in 2008, is now spending “expensive and growing legal fees” to defend her trademark against Mattel, the artist said in her blog post last week. Yardley uses the trademark to sell her artwork, which includes squirrel-themed paintings, books, toys, and dolls.
The Canadian Intellectual Property Office (CIPO) has blocked the U.S. company’s application to trademark the word “Caroline,” saying it would be too close to Yardley’s trademark. Mattel’s lawyers have now started expungement proceedings, requiring the artist to provide evidence that she is, in fact, using her trademark. If she fails to prove that she has used it in the last three years, she will have no other option but to cancel the trademark, she wrote on her blog. The National Post noted that even if Mattel’s attempt to expunge Yardley’s trademark is unsuccessful, she will remain open to further challenges at the Federal Court of Appeal.
Yardley, who says she abandoned a career at a software company to devote herself to art full-time, stated that she wanted to share her story to warn other artists and small business owners of the need to protect their brands and business.
American Girl is a Middleton, Wisconsin-based subsidiary of Mattel, and was set up 25 years ago as a line of dolls and books. The popular doll company announced plans to expand into Canada in October 2013. Representatives of the company told the CBC that its first two Canadian outlets will open in Vancouver and Toronto.
Which name do you think will come out on top?