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30 August 2023FeaturesTrademarksMarisa Woutersen

In the pink: Mattel's unstoppable Barbie dream

Greta Gerwig’s Barbie the Movie has become the highest-grossing film of 2023 bringing in over US $1.3 billion at the worldwide box office.

The director also makes history as the first woman to reach the billion-dollar milestone as a solo director.

Surrounding the film, Mattel and Warner Brothers have capitalised on their crossover licensing opportunities and created an unstoppable marketing strategy that was hard to miss.

The campaign began in April 2022 when Warner Brothers released the first image of Margot Robbie as Barbie, with the movie's release date for July 2023—since then the hype has not stopped.

“We are thrilled to see how much love and excitement Barbie the Movie has already sparked among fans,” said Lisa McKnight, executive vice president and chief brand officer at Mattel, in a press release.

Mattel has partnered with more than 100 brands and retailers on Barbie collaborations surrounding the movie's release.

These include a pink Barbie burger covered in pink sauce in Burger King Brazil, a Lush x Barbie pop-up shop in London, Barbie-themed Crocs, and a Barbie collaboration with Monopoly set to launch later this year.

Mattel has also released the Barbie the Movie product collection, a line of dolls and accessories based on the film.

McKnight added on the collection: “We are offering even more ways for fans to immerse themselves in Barbie Land and celebrate the characters and stories they see on screen.”

Iconic brand goes global

“Barbie was a mega-brand before the latest box-office smash, and even more so now,” says Oliver Fairhurst, partner at Lewis Silkin.

Its creator, Mattel, holds an extensive array of IP rights and thousands of registrations.

The Barbie logo and name are protected by a total of 64 registered trademarks at both the EUIPO and UKIPO.

This extensive protection encompasses a wide array of products and services, ranging from toys to watches, clothing to soaps and perfumes.

A search of the UK trademark registry for the word "Mattel" produces over 700 results and the company has 229 registered trademarks in the UK alone.

The toymaker’s trademark registrations for Barbie can be traced back to 1962 in Class 28, which covers toys, dolls, games, and playthings.

This coverage extends to the present day, encompassing diverse categories such as Class 25, cosmetics, Class 3, sweets, and Class 41, entertainment and films.

Joanna Corbett-Simmons, a legal director at Blake  Morgan, discovered a recent registration for Class 43 (hotels, cafes and bars) that could “potentially provide a hint” for what’s to come next for the brand.

“It’s likely the trademarks are the main focus of Mattel's licensing agreements, giving others the right to use the Barbie name and logo on specific goods in specific territories,” says Corbett-Simmons.

Mattel will be closely monitoring the usage of the trademark to ensure that licensees adhere to the terms of these agreements.

“Barbie’s IP is so valuable at least in part due to its careful protection by Mattel over previous decades,” explains Fairhurst. “Its value for licensing deals is probably at an all-time high, but so is the risk of third parties trying to get in on the action. Its brand protection teams will be working overtime.”

Bearing the burden of success

Mattel’s success with Barbie the Movie has been instrumental in amplifying the brand's value, with the company looking to reach new audiences as well as existing fans.

Unfortunately “success often leads to others looking to grab a slice”, says Fairhurst, with other brands attempting to imitate or counterfeit products.

He predicts that Mattel will intensify its efforts to deal with counterfeiters using Barbie branding but may also look to broaden out its rights to “cover aspects of the Barbie get-up that alludes to Barbie without actually using its famous trademarks.”

Corbett-Simmons agrees that the bigger the brand, the more chance of counterfeits emerging, making IP protection to be more important than ever for Mattel.

“Mattel will inevitably have a team of experts monitoring the market for potential infringers.  We would expect them to be selective in those they take action against given the breadth of the market and popularity of the brand,” continues Corbett-Simmons.

According to Sally Britton, partner at Mishcon de Reya, the film has allowed Mattel to further build its reputation in the various elements of the Barbie brand, such as Barbie Pink (Pantone 219C), the Barbie font, and slogans from the film.

"In July 2023 Mattel applied for a variety of registrations in the US to extend its protection in the Barbie brand with applications including BARBIEPINK, BARBIEDOM and I AM KENOUGH,” she notes.

Considering the widespread use of the colour Barbie Pink in the promotion of the film, Britton predicts Mattel is probably revisiting the idea of filing a trademark application for this colour.

Likely prompted by the colour’s distinctiveness and brands such as Tiffany and Cadbury having added significant value with their protected colours.

Song clashes, diversity, and the ‘Barbenheimer’ buzz

Mattel’s history has been marked with many IP disputes, ranging from its early clash with the creators of Bild Lilli (a predecessor to Barbie) to a legal conflict with the music group Aqua over the iconic Barbie Girl song in 1997.

Mattel expressed concern about Aqua's Barbie Girl song, perceiving it as a negative portrayal of the brand.

Following an extended and complex legal battle, the US Supreme Court eventually deemed the song to be a parody and critique of Mattel’s doll.

Surprisingly Mattel later incorporated a rendition of the same song in promotional advertisements for their Barbie Fashionista and Fab Girl Barbie dolls.

A potential issue is the increase of brands attempting to manufacture and produce Barbie accessories, similar to the Dream Boat, Dream House, etc, without being affiliated with or approved by Mattel.

“Brands such as Barbie, which have a modular product range, where one can buy accessories to build a collection, also face the issue of products that are compatible with but not produced by the brand,” explains Fairhurst.

Another challenge faced prior to the making of Barbie the Movie was that despite Barbie’s feminist origins, “the brand faced a downturn in popularity during the 2010s largely due to criticisms of a lack of diversity within the toy line, and its perceived promotion of an unhealthy and unrealistic body image for young girls,” says Corbett-Simmons.

She refers to Mattel as a “trailblazer” that had difficulty remaining relevant and relatable.

Turning to its customers for answers, Mattel discovered its decline in popularity was due to representation.

Barbie is now one of the most diverse and inclusive dolls on the market, with over 175 looks offering a variety of eye colours, hair colours and textures, body types, disabilities and fashions.

The predominant and expected issue since the movie runup and release has been the increase in counterfeit items.

However, the movie has “prompted some unexpected issues [such as] a spate of hackers taking advantage of online searches for Barbie, promoting links that will download malware onto the user’s machine,” says Corbett-Simmons.

Another interesting and unpredicted issue from the movie is the portmanteau of Barbie and Oppenheimer into ‘Barbenheimer’ a term referring to the concurrent cinema releases of both films.

The simultaneous launch of Barbie and Christopher Nolan's Oppenheimer enabled both films to gain recognition and the two leaned on one another in the lead-up to the release.

“Two trademarks have been filed in the US for the word BARBENHEIMER, and I expect they will be opposed by Mattel,” notes Fairhurst.

‘The future looks pink!’

Mattel’s Barbie world strategy will continue beyond the DVD release and premieres on streaming platforms.

An Adventure Park in Arizona is scheduled to open next year, featuring a life-size Barbie beachhouse (and no doubt a huge selection of Barbie licensed merchandise) “which will provide further momentum for the brand,” according to Corbett-Simmons.

“While the Barbie brand is flying high and clearly has staying power, these things go in cycles. The licensing offers will be flooding in, and the key is to make the most of it without causing Barbie overload or cheapening the brand,” says Fairhurst.

Britton adds: "It's clear that Mattel understands that Barbie's brand is not just her name but a variety of different elements.”

“Unsurprisingly, identifying core brand assets and using/registering them extensively and consistently will build brand value."

However, above all, Corbett-Simmons believes that Mattel’s resilience stems from its ability to embrace diversity and convey this to its customer community.

Barbie's evolution has been a result of the brand's need to adapt and cater to a younger and more diverse audience, she says, adding: “Strategic licensing is also key, and Mattel has shown the importance of partnering with brands whose values align with your own to capitalise on your joint popularity and expand your reach.”

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