Barbie-creator Mattel opposes Burberry’s trade mark application “BRBY”

Barbie has become a viral phenomenon due to the film directed by Greta Gerwig and starring Margot Robbie and Ryan Gosling that will be released in July this year. Just days before the release of the Barbie live-action film, the famous blonde doll has recently started a dispute with the British luxury brand Burberry.

The toymaker Mattel, creator of Barbie dolls, has indeed filed an opposition against a trade mark application filed by Burberry. Mattel has asked the US Trademark Office to reject British fashion house Burberry’s proposed “BRBY” trade mark, claiming it is likely to evoke confusion with the famous Barbie trade mark. In the opposition, the toymaker argues that the initials “BRBY” are very similar to the name of the Barbie doll brand in both spelling and phonetics.

Barbie is not only the world’s best-known doll, but also a registered trade mark. Last year, Burberry applied for registration of the word mark “BRBY” with the US Patent and Trademark Office for use on the brand’s apparel and accessories. The creator of Barbie has filed several applications with the Trademark Trial and Appeal Board opposing the use of the trade mark “BRBY” because, according to Mattel, the abbreviation could be read phonetically as Barbie.

The legal basis for Mattel’s claim is that the “BRBY” trade mark applied for is highly similar to the Barbie trade mark in appearance, sound, and commercial impression. Mattel claims that the marks are phonetically identical due to the lack of vowels guiding the pronunciation: “because Applicant’s mark lacks any vowels to guide pronunciation, it would likely be read in a manner phonetically identical to Barbie” and argued that consumers would view “BRBY” as a subset or expansion of the Barbie trade mark.

US Courts have found that similarity in sound is one factor for determining whether trade marks are similar, but would the average consumer make that connection? − asked Josh Gerben, a recognised trade mark attorney.

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 “leather products” and 25 “clothing, footwear, headwear”) “directly overlap” with many of the goods/services that it markets under the Barbie trade mark. For instance, Mattel claims that it has used and uses the Barbie trade mark in connection with handbags, luggage, a broad range of clothing, footwear and headwear −all of which are also proposed under the Burberry mark. Mattel also argues that not only Burberry’s goods, but also customers and marketing channels so closely overlap with the Barbie ones, that Burberry “is highly likely to cause confusion or mistake, or to deceive consumers” about the source/nature of any BRBY goods. Therefore, the BRBY mark for Burberry clothing, bags and other products would mislead consumers into thinking they were associated with Mattel’s Barbie dolls and related merchandising, argues Mattel.

Furthermore, Mattel affirms that Burberry “has intentionally chosen the BRBY mark in order to create an association in the minds of those in the marketplace with the Barbie mark”. Mattel considers that with this association Burberry could take advantage of Barbie’s reputation, so they want to prevent Burberry from launching products under this new name.

Setting the stage in its June 26 opposition, Mattel states that its Barbie trade mark is “one of the most recognisable brands in the world” and that it will be harmed if the US Trademark Office green-lights the British fashion brand’s application for registration.