Mattel prevents registration of BARBIE GRIFFIN for adult entertainment services

United States of America
In a non-precedential opinion, Mattel Inc v SW Fantasies Inc (Opposition 91170977, September 26 2012), the Trademark Trial and Appeal Board (TTAB) has denied registration to the mark BARBIE GRIFFIN for entertainment services and adult entertainment services, namely "websites featuring photographs, video presentations and information about a model; and live appearance by a model", based on likelihood of confusion with the BARBIE mark owned by Mattel.

Applying the factors used to determine likelihood of confusion as established in the case of In re Du Pont, the TTAB held in Mattel’s favour on each factor it analysed. 

First, the TTAB determined that the BARBIE mark is famous and entitled to a wide scope of protection. While the TTAB did not elaborate as to which evidence it found most persuasive, the record consisted of a variety of compelling evidence, including:

  • proof of use of the BARBIE mark for more than 50 years; 
  • use of the BARBIE mark in connection with entertainment services for 10 years; and
  • annual sales of more than $2 billion, more than half of which was shown to be attributable to sales other than toys. 

Second, the TTAB looked to the similarity of the services, the channels of trade and the classes of consumers.  The TTAB narrowed its focus to three of the many registrations pleaded by Mattel, reasoning that, if confusion was or was not likely with the services identified in the three most relevant registrations, then it needed not consider other less similar goods/services listed in other registrations. The three registrations chosen by the TTAB identified online information services and online educational and entertainment services all related to games and toys, with certain services specifically listed as “intended for adults and children”, and live appearances by a costumed character. 

The TTAB made much of the fact that only some of the services in the opposed application were limited to “adult entertainment services”. Where there was no such limitation, the TTAB applied the oft-stated rule that it must construe the identification to cover all customary channels of trade without regard to whether the applicant’s goods/services are in reality directed to a particular class of consumer or channel of trade. Thus, the TTAB would not consider whether all of the applicant’s services under the BARBIE GRIFFIN mark were provided in the adult entertainment field (this leaves open the question of whether a more narrow identification with limited trade channels would have led to a different holding).

The TTAB concluded that the respective online services were similar because they both offered information and materials about the respective characters named by their marks. Consistent with TTAB practice, the TTAB held that, “although those characters may in fact have very different attributes and audiences, any such differences are not reflected in the identification of services”. Additionally, live appearances by a costumed character were held to be similar to live appearances by a model.

As for the similarity of the marks, the TTAB pointed out that Mattel’s BARBIE mark is entirely incorporated within the applicant’s BARBIE GRIFFIN mark, and relied on precedent that the first word in a two-word mark may be more prominent. Perhaps most interestingly, the TTAB found that people familiar with Mattel’s BARBIE mark may assume that GRIFFIN is the surname of the famous BARBIE doll character (according to several online resources, the doll’s actual surname is Roberts, but that was not addressed in the TTAB’s opinion).

The other Du Pont factors were dismissed as less relevant to the analysis, allowing the TTAB to determine that, on balance, the factors weighed “heavily in favour of a finding of likelihood of confusion”.

Karin Segall, Leason Ellis LLP, White Plains

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