Taken from www.fashionlaw.com | Author: TFL | Date: 28 June 2023
The meteoric rise of so-called Barbie-core – as helped along by a flurry hot pink wares on the runway and Greta Gerwig’s much-anticipated Barbie film – has an interesting new facet to it: Mattel is taking on Burberry in a new trade mark-centric clash. As we noted last week, Burberry filed an application for registration with the U.S. Patent and Trademark Office in July 2022 for the “BRBY” word mark for use on apparel and leather goods, and has caught the attention of BARBIE-maker Mattel in the process. In response to Burberry’s application, Mattel lodged a number of opposition-specific extensions with the Trademark Trial and Appeal Board (“TTAB”) and then finally filed a notice of opposition this week, asserting that it will be damaged if Burberry’s vowel-less mark is registered.
Setting the stage in its June 26 opposition, Mattel states that its BARBIE trade mark is “one of the most recognizable brands in the world.” In addition to amassing “extensive common law rights” as a result of decades of use, the “BARBIE® and BARBIE-formative marks” serve as the basis for a robust portfolio of trade mark registrations that range from the use of the BARBIE name on everything from dolls, toy furniture, and “accessories and doll clothes” to apparel, accessories, and footwear for children and adults. Further speaking to the well-known nature of the BARBIE mark, Mattel states that the U.S. Court of Appeals for the Second Circuit recognized back in 1991, for example, that “the ‘BARBIE’ doll is the best-selling toy doll in the world,” with “96 percent of three to eleven-year-old girls in the U.S. own[ing] at least one,” and in the span of 30 years to 1990, “600 million Barbie dolls were sold, one sold every two seconds.”
Against that background and given the likelihood of confusion that will stem from Burberry’s unauthorised use/registration of the BRBY mark, which is “highly similar to” the BARBIE marks in “appearance, sound, and commercial impression,” Mattel asserts that it will be harmed if the U.S. trademark office green-lights the British fashion brand’s application for registration.
Specifically, Mattel alleges that “the dominant (and, in most cases, the sole) portion of [its] mark is the word BARBIE.” Considered alongside the mark at the heart of Burberry’s application for registration (which is based on an existing registration in the United Kingdom), the Southern California-based toy titan claims that the marks are “visually similar,” and “when spoken aloud, [they] are phonetically identical.” In particular, Mattel contends that because Burberry’s mark – which the fashion brand has not yet used in the U.S., according to Mattel – “lacks any vowels to guide [the] pronunciation, it would likely be read in a manner phonetically identical to BARBIE.” In fact (and in light of enduring BARBIE-centric collaborations), Mattel claims that the BRBY mark “could reasonably be viewed by consumers as a subset or expansion of the BARBIE® trade marks.”
Beyond the similarities shared by the respective companies’ marks, themselves, Mattel maintains that the goods listed in Burberry’s trade mark application for registration (namely, those in Classes 18 and 25) “directly overlap with” many of the goods/services that it uses the BARBIE trade mark on. 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 [Burberry] mark.” As such, consumers would “likely wonder if, or assume that, [Burberry’s] goods are licensed by or affiliated with [Mattel],” the company states in furtherance of its likelihood of confusion claim.
Doubling-down on its argument here, Mattel also argues that Burberry’s “goods, customers, and marketing channels so closely overlap with [its own] goods and services” that Burberry is “highly likely to cause confusion or mistake, or to deceive consumers” about the source/nature of any BRBY trade mark-bearing goods.
In addition to the likelihood of confusion that Burberry’s mark will cause, Mattel also opposes registration of the BRBY mark on dilution grounds, stating that it and its related companies “have engaged in nationwide advertising, promotion, and use of its distinctive … BARBIE® mark, for more than 60 years.” Hardly a coincidence, Mattel says 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 Mattel and its goods. “In view of the similarities of the parties’ marks and the fame of [Mattel’s] BARBIE® mark,” Burberry’s mark “so closely resembles [Mattel’s] famous BARBIE® mark” that it is likely to dilute “the distinctive quality of the BARBIE® mark,” the Barbie-maker argues, citing the potential for dilution by blurring and by tarnishing.
With the foregoing in mind, Mattel urges the TTAB to block the registration of the BRBY mark.