Summer 2023 is heating up to be the Summer of Barbie. Last week Mattel filed a Notice of Opposition against Burberry’s proposed “BRBY” trademark with the Trademark Trial and Appeal Board asserting likelihood of confusion with Mattel’s Barbie brand. It asserts that Mattel will be damaged if Burberry is permitted to register “BRBY” because the mark is “highly similar” in “appearance, sound, and commercial impression.” Mattel has said that “when spoken aloud, the marks are phonetically identical.” It also asserts that a BRBY mark on clothing, bags or accessories would dilute the Barbie brand and consumers may be fooled into thinking the mark is a “subset or expansion” of Barbie.
While Burberry may have a strong argument that the initials “BRBY,” whose stock symbol is “BRBY.L,” could just as easily be associated with its brand, it will be up to the Trademark Trial and Appeal Board to decide if BRBY will in fact cause a likelihood of confusion between the fashion icons.
This illustrates the importance of monitoring your trademark to protect against unauthorized use and strengthen your trademark protection. This can be done a few different ways. First, you can check the USPTO filings regularly to see if anyone has applied to register a trademark that is similar to yours. If you learn that someone is trying to register a confusingly similar trademark, you can oppose the registration—like Mattel has. The opposition must be filed within 30 days of the date the proposed registration is published in the Official Gazette, the USPTO’s official journal. Once an opposition is filed, the Trademark Trial and Appeal Board will proceed in a manner that is similar to a court case.
It is also important to monitor social media platforms and other websites—because not all would-be infringers register their trademarks. In this instance, if you feel that your trademark is being infringed, the best course of action is to send a cease and desist letter notifying the infringer of your registered trademark. The letter should also describe your trademark and let the infringing party know how their mark infringes upon your rights. If the cease and desist letter does not work, you may have to file a lawsuit to enforce your trademark rights.
Either way, monitoring your trademark is important because if an infringer can successfully argue that you were sitting on your trademark rights, it can potentially escape liability.