Joshua Julien Brouard
15 July 2023 • 2.41 min read
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Trademark applications can be rejected for being too similar to other marks. The trademark office might also deny marks if they're similar and are applied for competing classes of goods or services. American multinational toy manufacturer, and the famous Barbie dolls creator, argue that Burberry's BRBY trademark application fulfills both of these criteria.
Read on as we explore this opposition and potential trademark trial in depth.
Burberry Limited has filed trademark registrations for BRBY under classes 18 & 25. Class 18 includes leather products that don't include clothing. This could mean:
Class 25, on the other hand, includes a wide variety of clothing products, such as the following:
Burberry applied initially on the 23rd of July, 2022. The USPTO published it for opposition on the 27th of December 2022 (with the time being extended to the 20th of January 2023).
Mattel filed the official opposition on the 26th of June, 2023.
Barbie maker Mattel argues that its BARBIE mark includes class 18 and class 25 products. Mattel claims that the company has and presently uses the mark for the following:
As Burberry has registered the BRBY mark for the same, Mattel argues that the trademark office should reject the application. It’s important to keep in mind that the Barbie brand has been around for decades, and over 600 million Barbie dolls have been sold.
Definition: Likelihood of confusion means that when two trademarks are similar and the goods or services they're being used are related in such a way that potential customers may confuse the two companies with each other.
Under the representation of Venable LLP, Mattel argues that the BARBIE and BRBY marks are "phonetically identical and visually similar."
In a statement, the toy company added: "This is particularly so given there is no correct pronunciation of a mark. Thus, because the applicant's mark lacks any vowels to guide pronunciation, it would likely read in a manner phonetically identical to BARBIE."
It's apparent that, along with Burberry planning to use the mark for similar goods or services, it's also similar and therefore boasts a significant likelihood of confusion.
In an additional statement, Mattel claims that the BRBY mark "could reasonably be viewed by consumers as a subset or expansion of the BARBIE trademarks.”
This opposition occurred during the soon-to-be-released Barbie movie. This film will star Suicide Squad's Margot Robbie, as Barbie, and Blade Runner's Ryan Gosling, as Ken.
This time frame is interesting.
The Barbie franchise likely anticipates an increase in Barbie-related merchandise sales following the movie and therefore is probably concerned about how confusion with the BRBY mark may impact its reputation and sales.
Mattel argues that Burberry's mark is so similar to the Barbie mark that it will likely "dilute the distinctive quality of the BARBIE mark."
If there's any "moral of the story" to be taken away here, it's that it's vital to do thorough research before applying for a trademark. A licensed attorney can do this and prevent costly issues such as what Burberry is facing with the BARBIE trademark.
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Joshua Julien Brouard
Joshua J. Brouard brings a rich and varied background to his writing endeavors. With a bachelor of commerce degree and a major in law, he possesses an affinity for tackling business-related challenges. His first writing position at a startup proved instrumental in cultivating his robust business acumen, given his integral role in steering the company's expansion. Complementing this is his extensive track record of producing content across diverse domains for various digital marketing agencies.
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