Commercial Litigation Update

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. 

As a business owner, you have invested time, money, and effort into creating a brand that represents your company and sets it apart from competitors. Protecting your investment through registering and enforcing your trademark plays an essential role in ensuring your efforts were not in vain. Without proper protection, your trademark, and by extension, your brand, may be vulnerable to infringement or dilution by competitors, resulting in loss of customers, revenue, and reputation. This is the first in a series of articles discussing how business owners can protect and enhance the goodwill developed in their brand.

Jack Daniel’s Property, Inc. has successfully petitioned the U.S. Supreme Court to hear its dispute against VIP Products LLC, a dog-toy maker known for its playful products that mimic various beverage brands. Jack Daniel’s argues that the 3x10 inch “Bad Spaniels” vinyl dog toy portraying a parody version of the well-known whiskey label violates its federal trademark rights and tarnishes the Jack Daniel’s brand.