Barbie v BRBY: Mattel’s spotlight continues
Mattel and Burberry have agreed a settlement leading to Burberry’s withdrawal of its trademark application for ‘BRBY’ in the US. Here, Molly Hackett looks at how Mattel challenged Burberry in their attempt to secure the BRBY trademark in the US.
Having successfully secured BRBY trade marks in the UK and the EU throughout 2022, the renowned UK fashion house, Burberry, applied for protection in the US. Rather ‘on brand’, given its history of defending and enforcing its IP rights, Mattel then filed a formal opposition at the U.S. Trademark Trial and Appeal Board this summer.
Mattel Inc asserted that the BRBY mark was stepping on Barbie’s toes for the following reasons:
Barbie and BRBY are “visually similar” and “when spoken aloud, are phonetically identical”, due to the absence of vowels in BRBY, meaning it “could be reasonably viewed by consumers as a subset or expansion of the BARBIE® trademarks”. The USPTO will factor in whether a mark sounds and looks similar when considering likelihood of confusion, exactly like here in the UK.
There is a “direct overlap”. Burberry sought to register the mark in class 18 and 25 (as they have in the UK and EU) which creates further likelihood of consumer confusion, given the wide range of products and industries the Barbie mark is used in – from toys, to entertainment, to clothing and argue that it has built “strong consumer recognition” in such products. Thanks to the recent movie hit and Mattel exploiting its rights via multiple brand licensing and partnership deals with the likes of Zara, the Barbie brand has developed a significant presence in the fashion world.
The similarities – being the appearance, sound and commercial impression. Mattel argue that these similarities create a risk that consumers could mistake Burberry’s products for being licensed or affiliated with the Barbie brand.
Burberry is trying to ‘ride off its coattails’ and have intentionally chosen BRBY to create association, taking advantage of Barbie’s reputation.
There has been speculation that Mattel opposed the mark as a marketing ploy and PR stunt to create more hype around brand, with Mattel opposing Burberry’s application so close to the release of the Barbie movie summer. Clever, right?
Barbie’s comeback is a perfect example of how having registered IP rights can play an instrumental part in expanding and growing a business. The heavily defended Barbie mark and its globally renowned reputation has enabled Mattel to commercialise and expand the brand into many products and industries which were traditionally ‘not their bag’.
The current success of Mattel’s IP policy is evidenced by Burberry’s agreement to step down and withdraw its BRBY mark application, however, the more the brand continues to expand the harder (and smarter!) Mattel will need to work to defend its IP rights and prevent others from diluting the brand image.
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[This blog is intended to give general information only and is not intended to apply to specific circumstances. The contents of this blog should not be regarded as legal advice and should not be relied upon as such. Readers are advised to seek specific legal advice.]