The Intellectual Property (IP) experts behind Mattel, a company that reinvented “Barbie”, diligently monitored any potential infringement, leaving no chance for other brands to potentially resemble Barbie. This includes the renowned British brand “Burberry.”

In July 2022, Burberry found itself in a legal dispute with Mattel. Burberry had sought registration of the “BRBY” word mark from the US Patent and Trademark Office for use on apparel and leather goods. However, this seemingly insignificant move did not go unnoticed by Mattel’s IP experts, and they swiftly took action.

Referring to the well-known nature of the Barbie mark, the “BRBY” designation appeared and sounded absolutely similar to the world-famous Barbie brand. With the help of their IP experts, they pursued various opposition-specific extensions with the Trademark Trial and Appeal Board (TTAB), expressing concerns that registering “BRBY” vowel-less mark could inflict damage upon their brand.

Given the high consumer recognition of the “Barbie” brand t has been contended that Burberry’s unauthorized use and potential registration of the “BRBY” mark are highly likely to cause confusion. The similarity between these two marks concerning their appearance, pronunciation, and overall impression gives rise to concerns that consumers might erroneously associate Burberry’s products with licensed or endorsed offerings from the Barbie brand.

Beyond the visual and phonetic resemblances, Mattel has raised additional concerns regarding the merchandise specified in Burberry’s trademark application. The categories that Burberry intends to cover, specifically Classes 18 and 25, directly overlap with the product categories where Mattel currently utilizes the Barbie trademark. Products such as handbags, overnight bags, luggage, clothing, apparel, footwear, and headwear are just a few examples of the items that both companies aim to offer. Consequently, consumers may become confused about whether Burberry’s products are officially affiliated or licensed by Mattel, which adds weight to the likelihood of confusion argument.

Moreover, given their extensive collaborations centered around the Barbie brand, Mattel suggests that the “BRBY” mark could reasonably be perceived as an extension or subset of the Barbie trademarks.

This article brought to you by Exy Intellectual Property.