Barbie maker seeks to block Burberry ‘BRBY’ mark
Mattel’s opposition comes just one month ahead of major film release | Toy maker argues likelihood of confusion, overlap of goods and dilution | UK fashion brand lists intended use of new mark on apparel.
Mattel, maker of the Barbie doll, has opposed a trademark application by British fashion label Burberry for the word mark ‘BRBY’.
The opposition precedes Barbie’s first foray into Hollywood, with Barbie the movie due for release on the big screen next month.
Burberry filed its application to register the word mark with the US Patent and Trademark Office ( USPTO) almost a year ago, in July 2022.
The London-based brand listed its intended use of the mark on clothing and other apparel, and leather goods, including bags and other luggage; baby carriers; umbrellas and parasols; walking sticks; horse blankets; and pet collars and leads.
Since the application, Mattel, headquartered in California, lodged several opposition-specific extensions with the Trademark Trial and Appeal Board ( TTAB), before submitting its notice of opposition this week, June 26, on the grounds of priority and likelihood of confusion.
Lanham Act claim
Citing the Lanham Act, toy maker Mattel—founded in 1945 and now located in 35 countries—claimed that its internationally recognised Barbie brand will be damaged by the registration of Burberry’s four-consonant mark.
By way of example, Mattel also cites Miss America Organization v Mattel, heard in 1991 by the US Court of Appeals for the Second Circuit, which at the time recognised that “the ‘Barbie’ doll is the best-selling toy doll in the world—96% of three to eleven-year-old girls in the United States own at least one.”
The court went on to say that “one [Barbie doll] is sold every two seconds—and, in 1990 alone 26 million of them were sold, earning gross revenues for Mattel of $740 million.”
Mattel also argues that Burberry’s mark is “highly similar” to its own ‘Barbie’ mark in “appearance, sound, and commercial impression”, and when spoken aloud, the marks are “phonetically identical”.
Further, goods listed in Burberry’s registration of BRBY would overlap with Mattel’s own goods and services bearing the Barbie mark, it said.
The toy maker claims that Burberry has “intentionally chosen [the BRBY mark] in order to create an association in the minds of those in the marketplace” between the Barbie mark and the Burberry brand and goods.
This, argues Mattel, is “likely to cause dilution by blurring the distinctive quality” of its famous mark.
Barbie: Sold more than two billion dolls
Since Barbie was first registered as a trademark in January 1959—in class 22 for the doll alone— it has released “dozens of variations” of the popular toy and sold more than two-billion Barbie dolls and related accessories, according to the opposition.
The first registration of the mark for use on ‘accessories for doll clothes’ was granted in 1962, followed by other registrations during the 1960s and 1990s for further clothing and other accessories for the doll.
The Barbie brand blossomed, with multiple registrations for items aimed for use on the doll as well as by children.
Registrations for a proliferation of products in various classes included toiletries and cosmetics ‘for use by little girls’, jewellery, toys, electrical goods, housewares, stationery and edibles.
Most recently, it registered the mark in September 2021 for ‘entertainment services’, namely, animated films, television programmes, computer games, and a website.
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