A remarkable clash between two titans, one representing the fashion industry and the other the toy industry, has unexpectedly come into play. Burberry, the prestigious British luxury fashion brand, has recently made a move by seeking approval from the US Patent and Trademark Office for their latest label, “BRBY,” which is poised to become the new hallmark adorning their accessories and garments.
In light of this development, Mattel, the renowned toy manufacturing company recognized for its ownership of Barbie dolls, has taken a decisive step by filing a notice against Burberry. Mattel is actively pressing the trademark office to dismiss Burberry’s fresh trademark application for “BRBY”, alleging that it could cause confusion with the famous Barbie brand.
Why has Mattel initiated legal measures to prevent Burberry’s trademark application for “BRBY” from being approved ?
Following Burberry’s application for registration with the US Patent and Trademark Office in July 2022, Mattel initially pursued the matter before the Trademark Trial and Appeal Board. It was only on June 26th that Mattel officially lodged the notice of opposition.
It is important to note that the Barbie brand holds immense importance and exudes remarkable power in the world of consumer products. With a legacy spanning several decades, Barbie has become a cultural icon and a symbol of aspiration, imagination, and empowerment for millions of individuals worldwide. The brand’s influence extends beyond its iconic dolls, encompassing a wide range of merchandise, media content, and collaborations.
The opposition filing holds significant importance, especially in light of the upcoming blockbuster movie, where Margot Robbie portrays Barbie and Ryan Gosling takes on the role of Ken, under the direction of Greta Gerwig. This highly anticipated film has propelled Barbie into the realms of viral sensation, captivating audiences globally. As the movie’s release date approaches on July 19, 2023, the excitement and anticipation among fans continue to reach unprecedented heights.
Mattel’s opposition: protecting Barbie’s image in the face of Burberry’s logo registration
In the legal battle initiated on June 26th, Mattel voiced its concerns regarding Burberry’s attempt to register a logo devoid of vowels, citing potential risks to Barbie’s long-standing reputation. Barbie’s name has adorned toys, apparel, and accessories for individuals of all ages, solidifying its position in popular culture. Mattel emphasizes Barbie’s immense success, with an astonishing 600 million dolls sold since 1990, equating to one doll sold every two seconds.
The company accuses Burberry of intentionally designing a logo that bears an uncanny visual and phonetic resemblance to Barbie’s well-known trademark, with the intention of capitalizing on the cultural significance associated with the iconic Barbie brand.
Alongside its legal argument, Mattel highlights that the Barbie mark extends beyond the realm of dolls, encompassing diverse industries such as fashion, jewelry, cosmetics, and the eagerly awaited live-action Barbie movie, scheduled for release in July. These arguments underscore the enduring value and broad recognition of the Barbie brand, transcending its core toy market.
Burberry’s trademark application includes items that directly overlap with various products carrying Mattel’s Barbie mark, including handbags, clothing, footwear, and more. Mattel asserts that this shared presence of goods and marketing channels increases the likelihood of confusion among consumers regarding the origin and affiliation of these products.
Trademark attorneys’ perspectives on Mattel’s legal action against Burberry
According to trademark and brand protection attorney Josh Gerben, Mattel is pursuing legal action against Burberry to safeguard its trademark rights. Maintaining control over trademark registrations is vital as it preserves the breadth of rights associated with the original trademark over time. While Mattel may not have significant concerns about Burberry’s use of a similar trademark, they aim to establish specific limitations through a mutually agreed-upon agreement. This proactive approach ensures that Mattel can effectively defend its trademark in potential future infringement cases, preventing the opposing party from arguing that Mattel neglected to enforce its rights.
On the other hand, there is also an argument that the letters “BRBY” in their trademark are more likely to be linked with pronunciations such as “Barbie” or “burby” rather than being perceived as an abbreviation for “Burberry.” A suggested solution, according to some experts, would involve resubmitting the trademark application with an additional “r,” resulting in “BRBRY.” This adjustment is believed to potentially alleviate any confusion and create better harmony with the company’s brand identity.
As the legal battle unfolds, the clash between these two giants serves as a reminder of the fierce competition and strategic maneuvering that takes place in the world of intellectual property. Ultimately, the outcome of this clash will shape the landscape of trademark protection and influence the future trajectory of both the Barbie and Burberry brands.
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