It’s Barbie’s World. Burberry’s Just Living in It.
Burberry and Mattel, maker of Barbie, recently settled a U.S. trademark dispute arising from Burberry’s application for registration of the mark “BRBY”, as Mattel withdraws its Opposition Notice and Burberry’s abandons its registration application.
Following a billion-dollar blockbuster release this Summer, scoring the highest-grossing opening weekend ever for a female directed film, Greta Gerwig’s movie “Barbie” once again demonstrated the pop culture icon that is Barbie. According to Google’s Halloween costume search data, Barbie was the year’s top costume search resulting in 1.8 million people dressing as the doll for Halloween this year. Since her initial 1969 debut, Barbie has come to serve as both a cultural proxy and an example of a smashing Intellectual Property (“IP”) success. Barbie brand-specific IP was valued at $701,000,000 before this summer’s film premiere and continually exhibits astonishingly strong consumer recognition. This results from Mattel’s strategic use of its Barbie IP as a mechanism to generate additional Barbie IP and corresponding revenue.
The year of Barbie has even permeated the United States Patent and Trademark Office, centering a dispute between Mattel, Inc., the owner and manufacturer of Barbie, and Burberry, a luxury British fashion house. In July of 2022, Burberry initiated an application with the United States Patent and Trademark Office for registration of the trademark "BRBY" for use on their goods in the apparel and leather industries. In June of this year, Mattel filed a Notice of Opposition to Burberry’s “BRBY” mark with the Trademark Trial and Appeal Board (“TTAB”).
Mattel argued a prevalent likelihood of consumer confusion between its “BARBIE” mark and Burberry’s “BRBY” due to visual similarities of the marks, as well as phonetical identicalities causing the lack of vowels in “BRBY” to be read the same as “BARBIE.” Moreover, Mattel argued that there is significant overlap in the goods and services covered by Burberry’s proposed mark and those covered by its own. Such overlap would include Mattel’s usage of “BARBIE” in relation to handbags, luggage, clothing, apparel, and other spheres of goods for which “BRBY” would also be used. Relying on its market expansion beyond the toy industry, particularly its famed Barbie dolls, Mattel asserted that consumers may presume that “BRBY” goods “are licensed by or affiliated with [Mattel],” demonstrating further likelihood of confusion grounds. In Mattel’s view, registration of “BRBY” would serve to enable Burberry’s profit from the cultural magnitude and historic success that is Mattel’s “BARBIE” trademark. Mattel’s Notice of Opposition especially emphasized that, with both consumer and court acknowledgement of the “BARBIE” mark’s historical fame and distinction, there is potential trademark dilution by means of blurring the distinct nature of “BARBIE” with “BRBY.”
Despite Burberry’s stock symbol being known as "BRBY.L," giving credence to the argument that Burberry’s brand is already associated with the “BRBY” consonants, Burberry retreated from registering “BRBY” in the United States. There appears to have been an agreement between both parties behind the scenes, as Burberry abandoned its “BRBY” application earlier this month with Mattel’s consent, leaving Mattel’s withdrawal of registration opposition to “BRBY.” The TTAB confirmed both Burberry’s abandonment and Mattel’s opposition dismissal without prejudice on October 26th.
However, Burberry has not yet entirely lost out on “BRBY” on an international scale. In 2022, the London headquartered fashion company successfully obtained two trademark registrations for the mark in connection with leather goods, apparel, and footwear by the United Kingdom and European Union Intellectual Property Offices. Another identical application is under examination at the Intellectual Property Office in Korea.
While the trademark clash between Mattel and Burberry is not going to play out any further in the United States, it remains to be seen if and how the two famed companies will battle it out abroad. Until then, we can continue embracing the remainder of the year of Barbie.