Artist goes after U.S. giant Mattel over trademark to her own name

For Victoria artist Carollyne Yardley, there’s a lot riding on a name.

While the name Caroline isn’t exactly like her own first name — for which she has a Canadian trademark to use with her artwork — it’s close enough to get her embroiled in a dispute with the American Girl, a subsidiary of Mattel Inc, which is based in Middleton, Wis.

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Mattel wants to register “Caroline” in Canada for its Caroline Abbot doll, a historical character from the U.S. side of the War of 1812.

The U.S. toy giant faced objections from the Canadian Intellectual Property Office, which controls and protects Canadian patents, because CIPO officials say Caroline is too similar to Yardley’s trademarked name of Carollyne.

Yardley has had to prove she’s actively using the trademark, or else the U.S. firm has a right to claim it. She’s got a lawyer and is filing paperwork in a process which has been ongoing since February 2013.

The fight boils down to “a one-woman show versus a $600-million corporation,” said Yardley on Monday.

Her purpose for speaking out is to encourage small-business owners to speak up for themselves, Yardley said.

“There’s a huge stereotype when you mention that you’re an artist — people immediately don’t attach the word business to artist,” she said.

“If you don’t have a contingency fund to hire a lawyer to file your evidence, then you’re liable to have your trademark expunged by the sheer nature of your inability to pay for it.”

It’s going to be a long time yet before the issue is resolved, said Yardley. “It can take two to four years now for an examiner to review the evidence,” she said. “If I get to keep my registered trademark, then American Girl can still take me to the Federal Court of Appeal.”

A representative for American Girl refused to comment on specifics of the case.

“American Girl generally does not comment on pending legal matters,” said Julie Parks in an email. “However, I can say that the issue is under administrative review at the Canadian Trademark Office and we look forward to a favorable resolution.”

Yardley hopes American Girl will back off on the Carollyne trademark so she can continue to use it to promote her art projects, which provide her main income.

These include a series of “Squirrealisms,” which feature a squirrel head on human bodies.

Yardley has spent more than $10,000 in legal fees fighting to keep her trademark.

She came from a web-development tech company helping business put their brands in place, so she’s armed with the knowledge to stay in this fight.

“I’m sure there are plenty of small businesses that have decided not to file evidence because of the cost involved and have lost their registration at the trademark office,” Yardley said.

She spends up to 200 hours on each painting and completes one artwork a month.

smcculloch@timescolonist.com

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