Mattel objects to Burberry’s BRBY trademark

Toymaker has asked USPTO to reject British fashion house’s trademark application
Montreal, QC / Canada - April 7 2019: collectible Barbie dolls by Mattel in national costumes and fantasy dresses in Barbie Expo, a doll exhibition in Cours Mont Royal in downtown.

Toymaker Mattel has been producing Barbies since 1959 Shutterstock; Catherine Zibo

Makers of the Barbie doll Matell has filed a notice of opposition at the US Patent and Trademark Office (USPTO) to a trademark applied for by luxury fashion house Burberry for BRBY.

Mattel, represented by Venable, argues that there is a high likelihood of confusion between its BARBIE mark and the applied for mark BRBY, saying they are visually similar and phonetically identical. Mattel adds: “This is particularly so given that there is no correct pronunciation of a mark. Thus, because applicant’s mark lacks any vowels to guide pronunciation, it would likely be read in a manner phonetically identical to BARBIE.”

Mattel also points out that its goods directly overlap with many of UK-headquartered Burberry’s goods and services. For example, Mattel has used and uses the BARBIE mark (and owns registrations for the BARBIE mark) in connection with handbags, overnight bags, luggage, a broad range of clothing and apparel, footwear and headwear – all of which are also proposed to be offered under the BRBY mark.

It also argues that the application would dilute the mark because as the marks are so similar “it is likely to cause dilution by blurring the distinctive quality of the BARBIE® Mark”.

Burberry sought to register the mark BRBY in July 2022 for goods and services in Class 18 (includes leather bags, vanity cases, holdalls), and Class 25 ( includes coats and jackets, articles of underclothing).

The toymaker has numerous Barbie trademarks, dating back decades, not just relating to the doll but greeting cards, time pieces, jewellery and T-shirts.

Barbie is one of the most popular and valuable brands in the children’s entertainment sphere and one of the most recognisable brands in the world.

In the past 30 years, 600 million Barbie dolls have been sold – one is sold every two seconds. Previous judgments have defined Barbie as a ‘famous’ and ‘distinctive’ trademark as it is defined in US trademark law through the Lanham Act.

The filing of the opposition comes as Mattel plans to release in July a live-action Barbie film starring actor Margot Robbie in the title role.

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