FOR PUBLICATION

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

JADA TOYS, INC. a California 

corporation, No. 05-55627 Plaintiff-CounterdefendantAppellee, D.C. No.

CV-04-02755-RGK

v.  (FMO)

MATTEL, INC., a Delaware AMENDED 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

Amended February 21, 2008

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. 

1563
COUNSEL

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

1566 JADA TOYS v. MATTEL
Jill M. Pietrini, Esq., Los Angeles, California, for defendantcounterclaimant-appellant Mattel, Inc. 

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. 

JADA TOYS v. MATTEL 1567
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

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

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. 

1568 JADA TOYS v. MATTEL
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. 

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

JADA TOYS v. MATTEL 1569
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)). 

[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 sub1570 JADA TOYS v. MATTEL
set 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 are

particularly relevant. 

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

JADA TOYS v. MATTEL 1571
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

the conclusion that dissimilarity alone could be dispositive.

Consequently, in Brookfield we were not afforded the opportunity to consider fully 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 consider fully 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. The analysis under each is the same.

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 and distinctive; (2) the defendant

1572 JADA TOYS v. MATTEL
is making 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 is likely to cause dilution by blurring

or dilution by tarnishment.2 15 U.S.C. § 1125(c)(1); California

Business and Professions Code section 14330. 

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

showing of competition or likelihood of confusion to succeed

on a dilution claim. 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 (noting that this circuit’s description of

dilution by blurring and by tarnishment requires a defendant

to use the plaintiff’s actual mark) (citation omitted). In order

2We note that in this case the district court applied the prior version of

the Federal Trademark Dilution Act (“FTDA”), 15 U.S.C. § 1125(c)

(2000), which required a showing of actual dilution. The actual dilution

requirement was a product of the Supreme Court’s decision in Moseley v.

V Secret Catalogue, Inc., 537 U.S. 418, 433 (2003), where the Court held

that the federal dilution statute required a showing of actual dilution. However, since that time the FTDA has been amended so as to require only a

likelihood of dilution to succeed. Trademark Dilution Revision Act of

2006 (“TDRA”), Pub. L. No. 109-312 § 2(1), 120 Stat. 1730. In this case,

we choose to apply the standard currently in operation so as to adhere to

our prior precedent established in Nissan Motor Co. v. Nissan Computer

Corp., 378 F.3d 1002, 1009-10 (9th Cir. 2004), in which we held that

application of the FTDA to an alleged diluting mark that was in use before

the statute’s passage was not retroactive because the FTDA authorizes

only prospective relief. 

We are aware that in Horphag Research Ltd. v. Garcia, 475 F.3d 1029,

1035 (9th Cir. 2007), we applied the FTDA retroactively, thereby creating

an unintentional intra-circuit conflict with Nissan. In Horphag, however,

neither party mentioned the TDRA in its briefs, nor moved for a petition

for panel rehearing or to vacate the mandate in light of the TDRA’s passage. Moreover, the plaintiff in Horphag prevailed under the more stringent version of the federal dilution statute. Accordingly, recalling the

Horphag mandate at this point would serve no purpose. 

JADA TOYS v. MATTEL 1573
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

because it has shown a likelihood of confusion, that finding

was inappropriate. 

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

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.3 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)(6).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

3This argument is largely moot in light of the TDRA’s requirement that

a showing of only a likelihood of dilution is necessary to succeed on a

dilution claim. See 15 U.S.C. § 1125(c)(1). 

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)(6) will be inapplicable. 

1574 JADA TOYS v. MATTEL
“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)(2)(A) provides a non-exclusive list of four factors

that a court may consider. These factors include: 

(i) The duration, extent, and geographic reach of

advertising and publicity of the mark, whether advertised or publicized by the owner or third parties. 

(ii) The amount, volume, and geographic extent of

sales of goods or services offered under the mark. 

(iii) The extent of actual recognition of the mark.

(iv) Whether the mark was registered under the

Act of March 3, 1881, or the Act of February 20,

1905, or on the principal register. Id.

[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 dollars have 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

likelihood of dilution either by blurring or by tarnishment. 15

JADA TOYS v. MATTEL 1575
U.S.C. § 1125(c)(1). Where, as here, a plaintiff’s claim is

based on a dilution by blurring theory, the question is whether

the “association arising from the similarity between a mark or

trade name and a famous mark . . . impairs the distinctiveness

of the famous mark.” Id. § 1125(c)(2)(B). A court may consider all relevant factors in making this determination, including the six identified by the statute: 

(i) The degree of similarity between the mark or

trade name and the famous mark. 

(ii) The degree of inherent or acquired distinctiveness of the famous mark. 

(iii) The extent to which the owner of the famous

mark is engaging in substantially exclusive use of

the mark. 

(iv) The degree of recognition of the famous mark.

(v) Whether the user of the mark or trade name

intended to create an association with the famous

mark. 

(vi) Any actual association between the mark or

trade name and the famous mark. 

[12] As has been stated, in this case a reasonable trier of

fact could conclude that the marks at issue are quite similar.

Moreover, there is significant evidence of actual association

between the alleged diluting mark and the famous mark. As

evidence of such, Mattel has submitted two surveys. In the

first, 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

1576 JADA TOYS v. MATTEL
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] Not only do these surveys indicate that consumers

associate one mark with the other; they suggest, too, 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. See Moseley, 537

U.S. at 433-34 (holding that such evidence is sufficient to

meet the heightened standard of actual dilution). Thus, a reasonable trier of fact could conclude that this evidence was sufficient to establish the existence of a likelihood of dilution.5

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

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 omit5The evidence of likelihood of dilution here is also enough to support

such a finding with respect to the California dilution statute. See Cal. Bus.

& Prof. Code § 14330 (requiring a showing of only likelihood of dilution).

JADA TOYS v. MATTEL 1577
ted).6

 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 has traditionally employed a two-part test to

determine whether two works are substantially similar: an

extrinsic test and an intrinsic test. Sid & Marty Krofft Television Prod., Inc. v. McDonald’s Corp., 562 F.2d 1157, 1164

(9th Cir. 1977). The specifics of the extrinsic test have

evolved during the years following Marty Krofft. As we

explained in Apple Computer, Inc. v. Microsoft Corp., 35 F.3d

1435, 1442 (9th Cir. 1994): 

As originally adopted in [Krofft], the extrinsic prong

was a test for similarity of ideas based on external

criteria; analytic dissection and expert testimony

could be used, if helpful. The intrinsic prong was a

test for similarity of expression from the standpoint

of the ordinary reasonable observer, with no expert

assistance. Id. As it has evolved, however, the extrinsic test now objectively considers whether there are

substantial similarities in both ideas and expression,

whereas the intrinsic test continues to measure

expression subjectively. (citations omitted). 

In this case, the district court concluded that because the

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

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

6

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. 

1578 JADA TOYS v. MATTEL
[14] We hold, however, that the district court did not conduct an objective test as to both ideas and expression as

required under the extrinsic test outlined in Apple Computer.

In addition, as to the intrinsic test, Mattel has raised a material

issue of fact. A trier of fact could conclude that the logos are

similar “from the standpoint of the ordinary reasonable

observer.” Id. 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. The district court must analyze

Mattel’s copyright claim under the Apple Computer framework. In addition, Mattel 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. 

REVERSED AND REMANDED FOR FURTHER PROCEEDINGS CONSISTENT WITH THIS OPINION. 

JADA TOYS v. MATTEL 1579