FOR PUBLICATION

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

JADA TOYS, INC. a California 

corporation,

Plaintiff-Counterdefendant- No. 05-55627

Appellee, D.C. No.

v.  CV-04-02755-RGK

M (FMO) ATTEL, INC., a Delaware

corporation, OPINION

Defendant-CounterclaimantAppellant. 

Appeal from the United States District Court

for the Central District of California

R. Gary Klausner, District Judge, Presiding

Argued and Submitted

April 12, 2007—Pasadena, California

Filed August 2, 2007

Before: Harry Pregerson and Johnnie B. Rawlinson,

Circuit Judges, and Brian E. Sandoval,* District Judge.

Opinion by Judge Sandoval

*The Honorable Brian E. Sandoval, United States District Judge for the

District of Nevada, sitting by designation. 

9257
COUNSEL

Adam R. Fox, Esq., Los Angeles, California, for plaintiffcounterdefendant-appellee Jada Toys, Inc. 

Jill M. Pietrini, Esq., Los Angeles, California, for defendantcounterclaimant-appellant Mattel, Inc. 

9260 JADA TOYS v. MATTEL
OPINION

SANDOVAL, District Judge: 

Defendant-Appellant Mattel, Inc. (“Mattel”) appeals the

grant of summary judgment in favor of Jada Toys, Inc.

(“Jada”) on Mattel’s federal and state trademark infringement

counterclaims. Mattel also challenges the district court’s entry

of summary judgment in favor of Jada as to its dilution and

copyright claims. 

We hold that because the district court erred in its application of the relevant infringement test, the district court’s entry

of summary judgment in Jada’s favor as to those claims is

reversed. We also hold that genuine issues of material fact

exist as to Mattel’s copyright and dilution claims and, therefore, the district court’s entry of summary judgment as to

those claims in favor of Jada is also reversed. 

I. FACTUAL AND PROCEDURAL BACKGROUND

Jada Toys is a California corporation that specializes in the

distribution and sale of miniature diecast toy cars, trucks, and

other vehicles. Generally, these vehicles are scale model replicas of actual vehicles. From 2001 to 2004, Jada produced a

line of toy trucks called HOT RIGZ. 

In 2001, Jada filed an application for a trademark registration of the term HOT RIGZ with the United States Patent and

Trademark Office (“U.S. PTO”). The trademark was issued

by and registered with the U.S. PTO in 2002, though Jada

used its HOT RIGZ trademark in advertising material and on

its toys and their packaging from 2001 to 2004. 

Mattel is also a toy company. Among its many lines of toys

is its familiar HOT WHEELS miniature vehicle brand, which

it has been marketing since 1968. The HOT WHEELS vehicle

line includes small scale versions of big rig trucks. Since

JADA TOYS v. MATTEL 9261
1968, Mattel has employed the use of a flame logo (“68

logo”) to identify the HOT WHEELS brand. In 1982 Mattel

developed a complementary version of the 68 logo, this one

incorporating the Mattel seal, to be used in conjunction with

the sale of its product. Mattel owns U.S. federal trademark

registrations for both of these flame logos. 

On April 20, 2004, Jada filed an action against Mattel,

asserting claims for trademark infringement, false designation

of origin, and unfair competition. Jada’s allegations, however,

were not related to its HOT RIGZ mark; rather, Jada claimed

that Mattel’s advertising and sale of its OLD SCHOOL and

NEW SCHOOL lines infringed on Jada’s use of its registered

trademark OLD SKOOL. Mattel asserted various affirmative

defenses and counterclaims. Among the counterclaims were

allegations that Jada’s HOT RIGZ mark infringed on Mattel’s

HOT WHEELS mark.1 Mattel also counterclaimed for copyright infringement and dilution. Ultimately, each party submitted motions for summary judgment. 

On March 15, 2005, the district court issued its ruling

regarding the parties’ motions for summary judgment. As to

Jada’s claims relating to Mattel’s OLD SCHOOL and NEW

SCHOOL marks, the court granted summary judgment in

Mattel’s favor. And as to Mattel’s counterclaims for infringement, copyright, and dilution, relating to Jada’s use of its

HOT RIGZ logo, the court granted summary judgment in

Jada’s favor. In granting summary judgment as to Mattel’s

infringement claims, the district court relied on the dissimilarity of the marks alone to determine that no likelihood of confusion existed. Mattel timely appealed the grant of summary

judgment as to its counterclaims. 

1Mattel alleged four separate infringement claims: (1) trademark

infringement under 15 U.S.C. § 1114; (2) false designation of origin under

15 U.S.C. § 1125(a); (3) common law unfair competition and unfair competition under California Business and Professions Code section 17200;

and (4) common law passing off. 

9262 JADA TOYS v. MATTEL
II. STANDARD OF REVIEW

The review of a grant of summary judgment as to an

infringement claim is de novo. Surfvivor Media, Inc. v. Survivor Prods., 406 F.3d 625, 630 (9th Cir. 2005). As such, we

“must determine whether, ‘viewing the evidence in the light

most favorable to the nonmoving party, . . . there are any genuine issues of material fact, and whether the district court correctly applied the relevant substantive law.’ ” Entrepreneur

Media, Inc. v. Smith, 279 F.3d 1135, 1140 (9th Cir. 2002)

(quoting Wendt v. Host Int’l, Inc., 125 F.3d 806, 809-10 (9th

Cir. 1997)). “Because of the intensely factual nature of trademark disputes, summary judgment is generally disfavored in

the trademark arena.” Id. (quoting Interstellar Starship Servs.,

Ltd. v. Epix, Inc., 184 F.3d 1107, 1109 (9th Cir. 1999)). The

Court may affirm a judgment on any ground fairly supported

by the record. Narell v. Freeman, 872 F.2d 907, 910 (9th Cir.

1989) (citing DeNardo v. Murphy, 781 F.2d 1345, 1347 (9th

Cir. 1986), cert. denied, 476 U.S. 1111 (1986)).

III. ANALYSIS

A. MATTEL’S TRADEMARK CLAIMS 

All of Mattel’s infringement claims are subject to the same

test. See Century 21 Real Estate Corp. v. Sandlin, 846 F.2d

1175, 1178 (9th Cir. 1988) (citing Rodeo Collection, Ltd. v.

W. Seventh, 812 F.2d 1215, 1217 (9th Cir. 1987)); see also

Vuitton Et Fils S.A. v. J. Young Enter., 644 F.2d 769, 777 (9th

Cir. 1981) (noting that if a product is marketed in such a way

so as to cause a likelihood of confusion, the defendant might

be guilty of “palming off”). Therefore, the critical determination is “ ‘whether an alleged trademark infringer’s use of a

mark creates a likelihood that the consuming public will be

confused as to who makes what product.’ ” Brother Records,

Inc. v. Jardine, 318 F.3d 900, 908 (9th Cir. 2003) (quoting

Thane Int’l Inc. v. Trek Bicycle Corp., 305 F.3d 894, 901 (9th

Cir. 2002)). 

JADA TOYS v. MATTEL 9263
[1] We employ an eight factor test (“Sleekcraft factors”) in

determining the likelihood of confusion. Brookfield

Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036,

1053-54 (9th Cir. 1999). These factors include: (1) strength of

the mark; (2) proximity of the goods; (3) similarity of the

marks; (4) evidence of actual confusion; (5) marketing channels used; (6) type of goods and the degree of care likely to

be exercised by the purchaser; (7) defendant’s intent in selecting the mark; and (8) likelihood of expansion of the product

lines. AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th

Cir. 1979) (citations omitted). 

[2] We have previously noted that the test for likelihood of

confusion is “pliant,” and that “[s]ome factors are much more

important than others, . . . .” Brookfield, 174 F.3d at 1054.

Jada seizes on such language as an indication that the district

court’s consideration of the dissimilarity of the marks alone

was sufficient to support its conclusion. We disagree. 

[3] Though the language we have used warns against “excessive rigidity” in applying the test, see id., we have never

countenanced a likelihood of confusion determination based

on a consideration of dissimilarity alone or, indeed, on the

consideration of any single factor. Instead, we have regularly

applied all the relevant factors, noting that a final likelihood

of confusion determination may rest on those factors that are

of the most relative importance in any particular case. See,

e.g. Surfvivor, 406 F.3d at 631-34 (applying all eight factors

and noting that “the test is a fluid one and the plaintiff need

not satisfy every factor, provided that strong showings are

made with respect to some of them.”). Thus, while a likelihood of confusion determination may ultimately rest on a subset of factors, evidence of relatively important factors must be

considered as part of that set. In the context of two subjectively dissimilar marks, evidence of actual confusion and evidence defining the context in which the goods are sold is

particularly relevant. 

9264 JADA TOYS v. MATTEL
To hold otherwise would allow the possibility that persuasive evidence of a particular factor may be considered at the

expense of relevant evidence of others. This problem is particularly acute where, as here, a court relies on the dissimilarity

of the marks to conclude that no likelihood of confusion

exists. In such a case, the potential for a judge to elevate his

or her own subjective impressions of the relative dissimilarity

of the marks over evidence of, for example, actual confusion,

is great. And where the subjective impressions of a particular

judge are weighed at the expense of other relevant evidence,

the value of the multi-factor approach sanctioned by this

Court is undermined. 

[4] Today’s holding is consistent with our prior decisions.

For while Jada accurately cites language from the case law of

this Circuit suggesting that dissimilarity alone may be a sufficient basis upon which to judge the likelihood of confusion,

Brookfield, 174 F.3d at 1054; Sleeper Lounge Co. v. Bell Mfg

Co., 253 F.2d 720, 723 (9th Cir. 1958), we conclude that the

language employed in those cases constitutes dicta and, therefore, we are not bound by it. See Inlandboatmens Union of

Pac. v. Dutra Group, 279 F.3d 1075, 1081 (9th Cir. 2002)

(holding that a panel is not bound by dicta in prior decisions).

In Brookfield, for example, we stated that “[w]here the two

marks are entirely dissimilar, there is no likelihood of confusion. ‘Pepsi’ does not infringe Coca-Cola’s ‘Coke.’ Nothing

further need be said.” Brookfield, 174 F.3d at 1054. In Brookfield, however, we did not conclude that the marks in question

were so dissimilar that no likelihood of confusion could exist.

Id. at 1054-55. To the contrary, we found that the marks were

quite similar. Id. Moreover, there is no indication that in

Brookfield we ignored evidence of other important factors in

determining that dissimilarity could be determinative. See id.

at 1054-60. And, beyond that, there was no evidence of actual

confusion presented in the case. Id. at 1060. Thus, in Brookfield we were not confronted with a situation where, as here,

strong evidence of other important factors existed to counter

JADA TOYS v. MATTEL 9265
the conclusion that dissimilarity alone could be dispositive.

Consequently, in Brookfield we were not afforded the opportunity to fully consider the ramifications of our comment. 

The same is true of our decision in Sleeper Lounge. There,

we noted that “[similarity of the marks] is the one essential

feature, without which the others have no probative value.”

Sleeper Lounge, 253 F.2d at 723. But as was the case in

Brookfield, in Sleeper Lounge we expressly noted that no evidence of actual confusion had been presented. Id. Thus, in

Sleeper Lounge we were no more able to fully consider the

impact of our statement than we were in Brookfield. 

[5] While the Brookfield and Sleeper Lounge decisions

offer important insight into the persuasiveness of dissimilarity, we must, nonetheless, conclude that though it may be true

that very dissimilar marks will rarely present a significant

likelihood of confusion, dissimilarity alone does not obviate

the need to inquire into evidence of other important factors.

Only upon such an inquiry may a court ensure that its judgment as to the likelihood of confusion is fully informed and

without error. Therefore, because the district court considered

only the dissimilarity of the marks in question, we reverse its

grant of summary judgment in favor of Jada. 

B. MATTEL’S DILUTION CLAIM 

[6] Mattel brought dilution claims under both federal and

California state law.2 3 The analysis under each is the same.

2Mattel’s federal claim falls under 15 U.S.C. § 1125(c)(1): “[t]he owner

of a famous mark shall be entitled . . . to an injunction against another person’s commercial use in commerce of a mark or trade name, if such use

begins after the mark has become famous and causes dilution of the distinctive quality of the mark.” Because this action was filed in 2004, prior

to the 2006 amendment of § 1125, see Trademark Dilution Revision Act

of 2006, Pub. L. No. 109-312 § 2(1), 120 Stat. 1730, the previous version

of § 1125 applies, codified at 15 U.S.C. § 1125(c)(1) (2000). 

3Mattel’s state law claim falls under California Business and Profes9266 JADA TOYS v. MATTEL
Panavision Int’l, L.P. v. Toeppen, 141 F.3d 1316, 1324 (9th

Cir. 1998). “In order to prove a violation . . . a plaintiff must

show that (1) the mark is famous; (2) the defendant is making

a commercial use of the mark in commerce; (3) the defendant’s use began after the mark became famous; and (4) the

defendant’s use of the mark dilutes the quality of the mark by

diminishing the capacity of the mark to identify and distinguish goods and services.” Id. (citing 15 U.S.C. § 1125(c)). 

[7] Neither federal law nor California state law requires a

showing of competition or likelihood of confusion to succeed

on a dilution claim. See Nissan Motor Co. v. Nissan Computer

Corp., 378 F.3d 1002, 1011 (9th Cir. 2004) (citing 15 U.S.C.

§ 1127); Cal. Bus. & Prof. Code § 14330. However, for a

plaintiff to establish that the mark is being used in commerce

(as per step two),“the mark used by the alleged diluter must

be identical, or nearly identical, to the protected mark.” Thane

Int’l, 305 F.3d at 905 (citation omitted). In order to be nearly

identical, two marks “must be ‘similar enough that a significant segment of the target group of customers sees the two

marks as essentially the same’ ” Id. at 906 (quoting Playboy

Enters. Inc. v. Welles, 279 F.3d 796, 806 n.41 (9th Cir.

2002)). 

Here, the district court granted summary judgment in favor

of Jada on Mattel’s dilution claims because the marks at issue

were not identical or nearly identical. Mattel claims that since

it has shown a likelihood of confusion, that finding was inappropriate. 

Jada claims, on the other hand, that the district court’s

sions Code section 14330: “Likelihood of injury to business reputation or

of dilution of the distinctive quality of a mark registered under this chapter

. . . shall be a ground for injunctive relief notwithstanding the absence of

competition between the parties or the absence of confusion as to the

source of goods or services.” 

JADA TOYS v. MATTEL 9267
determination that the marks were not identical is supported

by the record and therefore summary judgment was appropriate. Jada also contends that Mattel has not made a showing of

actual dilution sufficient to support its claim under federal

law. And as to Mattel’s state law claim, Jada argues that Mattel is barred from such a claim because Jada owns a valid federal registration mark, which acts as a complete bar to a

dilution claim under state law. 15 U.S.C. § 1125(c)(3).4

[8] Turning first to the district court’s determination that

the marks in question were not sufficiently identical, we conclude that a reasonable trier of fact could find that the HOT

WHEELS and HOT RIGZ marks are nearly identical. They

both contain the word “hot,” they both are accompanied by a

flame, and they use similar colors; they also convey a similar

meaning and connotation vis a vis their use of the modifier

“hot.” Cf. Thane Int’l, 305 F.3d at 907 (holding that a reasonable trier of fact could conclude that the marks “OrbiTrek”

and “TREK” were nearly identical). 

In determining the degree of fame a mark retains, 15 U.S.C.

§ 1125(c) lists eight factors that a Court may consider, though

no single factor is determinative. Thane Int’l, 305 F.3d at 907

(stating that the eight-factor test is “flexible”).5 In addition, to

4

Jada’s claim that its HOT RIGZ registration acts as a bar to Mattel’s

state law claim is misplaced because Mattel’s eighth counterclaim is for

cancellation of the HOT RIGZ registration under 15 U.S.C. § 1064. As

such, if Mattel can succeed in obtaining that cancellation, the bar to state

unfair competition actions found in 15 U.S.C. § 1125(c)(3) will be inapplicable. 

5These factors include: “the degree of inherent or acquired distinctiveness of the mark; the duration and extent of the use of the mark in connection with the goods and services with which the mark is used; the duration

and extent of advertising and publicity of the mark; the geographical

extent of the trading area in which the mark is used; the channels of trade

for the goods or services with which the mark is used; the degree of recognition the mark in the trading areas and channels of trade used by the

marks’ owner and the person against whom the injunction is sought; the

nature and extent of the use of the same or similar marks by third parties;

and whether the mark was registered under the Act of March 3, 1881, or

the Act of February 20, 1905, or the principal register.” 15 U.S.C.

§ 1125(c)(1). 

9268 JADA TOYS v. MATTEL
be considered famous the mark must be “truly prominent and

renowned.” Id. at 908 (citing Avery Dennison Corp. v. Sumpton, 189 F.3d 868, 875 (9th Cir. 1999)). 

[9] Here, a reasonable trier of fact could conclude that the

HOT WHEELS mark is famous: it has been in use for over

thirty-seven years; $350 million has been expended in advertising the mark; three billion HOT WHEELS units have been

sold since the inception of the mark; and HOT WHEELS are

sold in all fifty states and throughout the world. 

[10] A reasonable trier of fact could also conclude that Jada

began using its mark after HOT WHEELS became famous.

The HOT WHEELS mark has been in use since 1968, but it

was only in 2001 that Jada began to employ the use of HOT

RIGZ. Thus, the HOT WHEELS mark had been acquiring

recognition for over thirty years before HOT RIGZ entered

the market. 

[11] The federal dilution statute also requires a showing of

actual dilution. Moseley v. V Secret Catalogue, Inc., 537 U.S.

418, 433 (2003). But “that does not mean that the consequences of dilution, such as an actual loss of sales or profits,

must also be proved.” Id. Instead, where the marks in question

are identical, the fact of identity alone is sufficient circumstantial evidence of actual dilution. Id. at 434. However,

where the marks are not identical, direct evidence of actual

dilution, e.g., consumer surveys, is required to make the requisite showing. Id. Those surveys, though, must establish

more than the fact that consumers mentally associate one

mark with the other; they must indicate that the mental association that occurs reduces the capacity of the famous mark to

identify its goods. Id. at 433-34. 

[12] While a reasonable trier of fact could conclude that the

marks at issue here are nearly identical, it is not the case that

they could be considered actually identical. As a result, Mattel

must submit direct evidence of actual dilution to create a genJADA TOYS v. MATTEL 9269
uine issue of material fact on this issue. See id. Here, Mattel

submitted two surveys to show actual dilution. In the first survey, respondents were exposed to the HOT RIGZ name and

asked who they believed “puts out or makes” a toy vehicle

with that name. Twenty-eight percent of respondents thought

that the toy vehicle put out under that name was either made

by Mattel or by the same company that produced HOT

WHEELS, or that whatever company did produce it required

permission from Mattel to sell the product. 

In a separate survey, respondents were shown a HOT RIGZ

package and asked who they thought put out that product. Of

the respondents, 7% believed it was either made by Mattel or

by the same company that produced HOT WHEELS, or that

whatever company did produce it required permission from

Mattel to sell the product.

[13] These surveys do more than indicate that consumers

associate one mark with the other; they suggest that Mattel’s

HOT WHEELS mark does not adequately identify its product

because Jada is able to convey, through the use of its HOT

RIGZ mark, the impression that Mattel either produces or

allows the production of HOT RIGZ. Thus, a reasonable trier

of fact could conclude that this evidence was sufficient to

establish the existence of actual dilution.6 The district court’s

entry of summary judgment is, therefore, reversed. 

C. MATTEL’S COPYRIGHT CLAIMS

In order to succeed in a copyright infringement claim, “a

plaintiff must show that he or she owns the copyright and that

defendant copied protected elements of the work.” Cavalier v.

Random House, Inc., 297 F.3d 815, 822 (9th Cir. 2002) (citing Shaw v. Lindheim, 919 F.2d 1353, 1356 (9th Cir. 1990)).

The protected elements of a work are those elements which

6The evidence of actual dilution here is also enough to support the California dilution statute’s requirement of a “likelihood of dilution.” 

9270 JADA TOYS v. MATTEL
are “original,” which is to say they are the product of “independent creation, not novelty.” Roth Greeting Cards v. United

Card Co., 429 F.2d 1106, 1109 (9th Cir. 1970) (citations omitted).7

 Copying can be proved by evidence indicating that the

infringer had access to the copyrighted work and that the protected portions of the works are substantially similar. Id. at

1110. 

This Court employs a two-part test to determine whether

two works are substantially similar. The first part, the extrinsic test, focuses on the similarity of the ideas expressed. Sid

& Marty Krofft Television Prod., Inc. v. McDonalds Corp.,

562 F.2d 1157, 1164 (9th Cir. 1977). The extrinsic test is

objective and involves an analysis of “the type of artwork at

issue, the materials used, the subject matter, and the setting

for the subject.” Id. The second part, the intrinsic test, focuses

on the similarity in expression. Id. This test is subjective and

thus turns on the impressions of the average reasonable

observer. Id. 

In this case, the district court concluded that because the

marks at issue were not similar, the extrinsic test was not met.

It also found that since the marks were not similar, no reasonable person could believe that they conveyed a similar expression and therefore the intrinsic test had not been satisfied.

[14] We hold, however, that a reasonable trier of fact could

conclude that the marks are objectively similar. It could also

be argued that, given the similarity of the marks, a reasonable

observer of the two marks could understand the HOT RIGZ

mark to be expressing the sense that the product sold under

7

Jada does not dispute that Mattel retains copyrights for its HOT

WHEELS flame logos. Jada also only tangentially disputes that some elements of the flame logos are not protectable. However, the combination

of the words used, the stylization of the flame graphic, and the colors chosen, suggest that elements of the flame logo are protectable for the purposes of a copyright infringement action. Cf. Roth Greeting Cards, 429

F.2d at 1109. 

JADA TOYS v. MATTEL 9271
that mark is, essentially, a HOT WHEELS product. Therefore,

the district court’s entry of summary judgment in favor of

Jada as to Mattel’s copyright claim is reversed. 

IV. CONCLUSION

The district court’s reliance on a single Sleekcraft factor —

dissimilarity of the marks — in its likelihood of confusion

determination was in error; therefore, its entry of summary

judgment in Jada’s favor as to Mattel’s trademark claims is

reversed. Those claims are hereby remanded for consideration

consistent with this opinion. Mattel also raised a genuine issue

of material fact as to its dilution and copyright claims; thus,

the district court’s entry of summary judgment in favor of

Jada as to those claims is also reversed. Those claims are

hereby remanded for trial. 

REVERSED AND REMANDED FOR FURTHER PROCEEDINGS CONSISTENT WITH THIS OPINION. 

9272 JADA TOYS v. MATTEL