Published August 17, 2023

In a surprising turn of events, Burberry, the renowned British fashion brand, has found itself entangled in a potential legal dispute with Mattel, the maker of the iconic Barbie dolls. It all started when Burberry applied with the US Patent and Trademark Office in July 2022, seeking registration of the “BRBY” word mark for use on apparel and leather goods. However, this seemingly insignificant move did not go unnoticed by Mattel, and they swiftly took action.

Upon discovering that “BRBY” sounded strikingly similar to their world-famous Barbie brand, Mattel pursued various opposition-specific extensions with the Trademark Trial and Appeal Board (TTAB). Their efforts culminated when they officially filed a notice of opposition, expressing concerns that registering Burberry’s vowel-less mark could inflict damage upon their brand. Thus, the stage is set for what may become a significant legal battle.

Emphasizing the undeniable prominence of the Barbie trademark, Mattel’s court application asserts that it is “one of the most recognizable brands in the world.” Over decades, the Barbie name has garnered extensive common law rights through its association with a diverse array of products, ranging from dolls, toy furniture, and accessories to apparel, footwear, and more, catering to both children and adults.

Citing the well-known nature of the Barbie mark, Mattel referenced a decision by the US Court of Appeals for the Second Circuit back in 1991. At that time, it was recognized that the Barbie doll was the best-selling toy in the world, with an astounding 96 % ownership rate among girls aged three to eleven in the United States. Furthermore, during the three-decade span leading up to 1990, an astonishing 600 million Barbie dolls were sold, equating to one sold every two seconds.

Considering the extensive reach and consumer recognition of the Barbie brand, has contended that Burberry’s unauthorized use and potential registration of the BRBY mark are highly likely to confuse. The similarity between the two marks in terms of appearance, sound, and commercial impression raises concerns that consumers may mistake Burberry’s offerings for licensed or affiliated products with the Barbie brand.

Mattel’s legal team argues that the dominant and most significant element of their mark is the word “BARBIE.” When juxtaposed with Burberry’s mark, which is based on an existing registration in the United Kingdom and has yet to be used in the US, the similarities become apparent. The absence of vowels in the BRBY mark led Mattel to assert that it would be phonetically identical to “BARBIE” when spoken aloud. Moreover, considering their enduring collaborations centered around the Barbie brand, Mattel suggests that the BRBY mark might reasonably be perceived as an extension or subset of the Barbie trademarks.

Beyond the visual and phonetic resemblances, Mattel raised additional concerns about the goods listed in Burberry’s trademark application. Classes 18 and 25, which Burberry intends to cover, directly overlap with the categories in which Mattel currently utilizes the Barbie trademark. Handbags, overnight bags, luggage, clothing, apparel, footwear, and headwear are just a few examples of the products that both companies aim to offer. Consequently, consumers may wonder if Burberry’s goods are licensed or affiliated with Mattel, adding weight to the likelihood of confusion claim.

Interestingly, this legal battle unfolds against the backdrop of the highly anticipated Barbie film directed by Greta Gerwig, which hit the box office in late July. The timing of Mattel’s notice of opposition, just weeks before the movie’s release starring Margot Robbie, seemed calculated to generate additional buzz around what Time Magazine has hailed as “the most anticipated movie of the summer, if not the year.”

As the stage is now set for a potentially protracted legal dispute, all eyes will be on the outcome and the ramifications it may have for both Burberry and Mattel.

Nishi Shabana

Written by Nishi Shabana

Founder Partner, Lume Legal

Lume Legal

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