BRBY-doll or BRBY-scarf?

Barbie is back (but was she ever really gone?). The success of the recent Barbie movie shows that the world's most famous doll is still alive and kicking. This is partly dueto the toy manufacturer Mattel, who strictly monitors their intellectual property rights to keep Barbie's reputation high. For instance, an opposition was filed against British luxury brand Burberry for the trademark 'BRBY' just before the film's release.

Mattel's strict trademark policy

In the world of brands, Mattel has already proven to have strict policies about the Barbie brand. Think about the case of Mattel, Inc. v MCA Records, INC. where Mattel noticed trademark infringement in connection with popular music group Aqua's hit song 'Barbie Girl'. Nothing has changed, as the recent Mattel Inc v Burberry Ltd case proves.

That case is about a recent trademark application to the USPTO by British luxury brand Burberry for the figurative mark 'BRBY'. Mattel filed a strong opposition against this application because of possible likelihood of confusion with the trademark 'Barbie'. This is because the mark is visually and, due to the lack of vowels, phonetically similar to their earlier Barbie marks, according to Mattel.

A timeless icon

To prove their claim, Mattel falls back on the reputation of the Barbie brand that surpasses decades and is seen as a global cultural representation of "aspiration, imagination and empowerment". Furthermore, Barbie has established itself in pop culture by selling more than 600 million dolls since 1990. Consequently, Barbie's impact is said to have surpassed the world of toys and also penetrated fashion, accessories, media and more.

It is this cultural relevance from which Mattel believes that Burberry can undeservedly benefit from by consciously using the confusing BRBY logo. The overlap in products, for which both brands are used, such as handbags, clothing (think also of the well-known checked Burberry scarf) and shoes, would create additional confusion among the target audience.

Mattel rightly quotes that they have built up an extensive brand identity through which the general public associates a certain reputation, quality and characteristics with Barbie.

Will BRBY become BRBRY?

The opinions are divided on this matter. On the one hand, as an established Brand, it is important to have a clear policy around Brand Protection and the protection of brand identity. Thus, it is quoted that Mattel is setting a clear precedent here. Therefore, one possible solution in the conflict is for Burberry to simply change the trademark to 'BRBRY', which would decrease the phonetic similarity.

On the other hand, Burberry can also fall back on a strong reputation and possibly demonstrate that the abbreviation does not confuse the target audience as to its origin. Whatever the USPTO decides, a clash between such big Brands will provide us with new insights about the world of Brands.