Barbie brand defends its trade marks
Mattel (the owner of Barbie) recently opposed Burberry’s US trademark application for the phrase “BRBY”.
Burberry has made a trademark application in the US register “BRBY” in relation to fashion and accessories.
As is the case with the UK, a trademark owner is able to oppose a US mark if it is similar in appearance or pronunciation as an existing registration and covers the same or similar goods/services as the existing registration.
Mattel has asked the US Trademark Office to reject the “BRBY” mark, stating that it would confuse the public as it is highly similar to Mattel’s own Barbie brand in both its spelling and phonetic pronunciation and has argued that the application overlaps heavily with the goods covered by the Barbie mark. Although Barbie’s branding is associated with dolls, they still heavily rely on the use of fashion and accessories within their specification in line with the products they sell.
The Barbie brand is flying high at the moment ahead of the eagerly awaited film. Burberry may not have intended that the public should associate their brand with Barbie but the fact that the timing of the application coincides with the release of the film won’t have helped them.
Many companies choose to abbreviate their name in some way and look to register these additional words and logos as trademarks. It will be interesting to see how Mattel’s opposition progresses and whether Burberry will be willing to withdraw or change their application, such that it cannot be associated with the Barbie brand.
The case acts as a reminder of the importance of considering how a new mark might interfere with existing marks. Completing a thorough search of the register before submitting an application will allow an applicant time to consider whether there are any marks visually or phonetically similar, and therefore tailor an application to avoid any obvious issues and unnecessary costs down the line!
