Mattel, manufacturer of Barbie, has asked the US Trademark Office to reject a proposed trademark from British fashion house Burberry.
Burberry filed a proposed trademark for “BRBY” last year but Mattel said that this will likely cause confusion with its Barbie brand when read phonetically.
Mattel said that it uses its “Barbie” mark in many fields beyond its dolls, including in jewellery, clothing and cosmetics — fields in which Burberry also operates. Mattel said that “BRBY” and “Barbie” were “visually similar” and “phonetically identical,” and argued consumers could view “BRBY” as “a subset or expansion of the Barbie trademarks.”
However, neither Mattel nor Burberry has commented further on the filing.
Josh Gerben, a trademark attorney said that the case was “a close call” on Twitter and that “Courts have found that ‘similarity in sound’ is one factor for determining whether trademarks are too similar.”
He added that he could “see how “BRBY” sounds like BARBIE…but would the average consumer make that connection?”
“Burberry is going to have a strong counterpoint that these initials could very much be associated with its name, especially in the context of how the mark is likely to be used,” added Gerben.
However, while Burberry did file the trademark for use with clothing and leather goods such as bags, the fashion house has not yet put the trademark to use in the US.
