Super Duper Publications, a small publisher of special education materials, continues its four-year long legal battle with the world’s largest toy company Mattel over the right to use the words “AND SAY” on its educational materials. The final outcome of this case will have widespread impact on the right of special needs and other educational companies to protect trade names on their materials against attacks from huge companies like Mattel

Super Duper, started by Thomas and Sharon Webber over 22 years ago in Greenville South Carolina, has provided tens of thousands of autistic and other children with learning disabilities with helpful educational products. Since 1987, the Webbers have used the words “AND SAY” and “SAY AND” in the titles of their speech and language materials, including workbooks, card decks, and games.

In March, 2004, Mattel opposed a trademark registration the Webbers had filed for use for the name “SORT AND SAY” on a line of special education magnetic games. A year later, Mattel filed to cancel three other Super Duper registered marks , FISH & SAY, FOLD AND SAY, and SEE IT!, SAY IT!.

Super Duper then filed a lawsuit in federal court, seeking a finding that its 15 SAY trademarks did not infringe on any of Mattel’s trademarks. Mattel responded by claiming Super Duper’s use of these SAY marks on its special education products amounted to trademark infringement and dilution of the Mattel’s SEE ‘N SAY electronic pull toy. Mattel asked the court to prevent Super Duper from publishing any of its materials using the 15 marks, and sought $10 million in damages.

The case was tried last week. At trial, Super Duper showed that, unlike Mattel, it is a direct mail order seller, has no retail outlets, does not compete in the toy industry, and makes only therapy materials for highly trained professionals and parents to use with autistic and other children with learning disabilities.

Nevertheless, the trial court, ignoring the usual practice of ruling on complicated trademark issues from the bench, submitted the case to the jury, which found that seven of Super Duper’s marks had infringed upon and diluted Mattel’s mark. It awarded the $5.6 billion dollar (annual income) toy company $400,000 in damages plus the right to prevent the Webbers from selling any of their educational products named with these marks.

The Webbers insist that none of their marks infringe upon or dilute the Mattel toy trademarks, and that nothing that they have done has hurt Mattel in any way. This week they will appeal the verdict to the Fourth Circuit Court of Appeals and continue to fight for the right to use “AND SAY” on their special education products. The decision by the appeals court will affect all businesses in general and educational publishers in particular, as it will spell out just how far monster-sized businesses like Mattel can use their limitless resources to try and take away everyday words like SAY from smaller companies and individuals.

Major brands that have faced the downside of foreign manufacturing, such as Disney and Nike, have considerable quality control and manufacturing certification processes and it would appear that Mattel did not. To your point, there is a lot of blame to spread around on this one.

It was Mattel that took credit last year for “price increases and supply chain savings more than offset external cost pressures”. Where did they think those savings were coming from.

Sponsored by Bloomberg.com Nestle posts 18% net rise, launches $21 bln buyback (MarketWatch) No matter what happens in the economy, people gotta eat, and Nestle, the world’s largest food company, is perfectly suited to take advantage of that “trend”…

On August 2nd Mattel recalled 1.3 million Fisher-Price toys that were coated with lead paint, so while I was misleading in suggesting that all of the toys were lead paint recalls, it was certainly a lot more than 200k die cast toys in today’s recall announcement.

Also, it wasn’t Mattel’s engineers that came up with the magnet scenario but the CPSC, which then coordinated the recalls. Mattel, quite frankly, was asleep at the wheel while this was happening given that this has been a known issue since 1993.

Vinnie,
I don’t think you are suggesting that the Chinese are being unfairly painted, no pun intended, on this and your point is taken. However, 80% of the toys sold in the U.S. originate in China and given the nature of the products they are typically single sourced. Even the electronics are coming from Chinese factories so I think it’s fair to say that China entirely owns this product safety issue and if they don’t get in front of it, well it could set them back years (I was going to write “decades” but consumer’s memories are way too short for that… look at Korea).

Hope you are well.

Having said that, Mattel’s problems could also have originated with domestic suppliers. It is real easy to blame foreign suppliers and the Chinese are being blamed for lots including contaminating the pet food supply chain. But when we buy over 200 b worth of stuff from a country, I guess we will see proportionately more problems there especially when cost, not quality, is the major buying driver.