BARBEE for Social Networking App Not Confusable with, nor Dilutive of, Famous BARBIE mark for Dolls, Says TTAB

In a 70-page opinion, the Board dismissed this opposition to registration of the mark BARBEE, in the logo form shown below, for "Online social networking services accessible by means of downloadable mobile applications." The Board concluded that the mark is neither likely to cause confusion with, nor likely to dilute, Mattel's mark BARBIE, registered for, inter alia, dolls, doll accessories, and online entertainment services. Although the Board deemed the BARBIE mark to be famous for dolls, it found the involved goods and services to be unrelated and the marks dissimilar. This blog post will attempt to hit the highlights. Mattel, Inc. v. BarBee Inc., Opposition No. 91281982 (February 6, 2026) [not precedential] (Opinion by Judge Martha B. Allard).

Opposer Mattel got off on the wrong foot when the Board denied its motion to amend the notice of opposition to include a claim of lack of bona fide intent. The Board ruled that the issue was not tried by implied consent, noting Applicant Barbee's objections to evidence on that issue and finding that Barbee was not "was fairly apprised that the evidence was being offered in support of the unpleaded issue."

Likelihood of Confusion: Barbee failed to provide any probative evidence diminishing the conceptual strength of the BARBIE mark. As to commercial strength, the Board found that "for purposes of the likelihood of confusion analysis, the BARBIE mark is very commercially strong (indeed 'famous' for purposes of likelihood of confusion) for 'dolls,' 'clothing for dolls,' and 'doll houses.'"

With respect to relatedness, Mattel "simply does not point to (nor did we locate) any evidence in the record that might establish relatedness, such as evidence of third-party uses or registrations of Applicant’s identified services and Opposer’s identified goods and services under the same mark. On this record, Opposer has not met its burden of proof and has failed to establish that the parties’ goods and services are related." Nor did Mattel establish that the channels of trade overlap.

Even assuming that the parties’ goods and services are both offered on, for example, Facebook and Instagram, Applicant likens these platforms to departments stores and supermarkets, arguing that advertising on these platforms alone is not enough to establish that the channels of trade overlap. We agree and consider this far too general of an overlap to have any meaningful impact on the likelihood of confusion.

As to the marks, "consumers who encounter Applicant’s mark would readily recognize its dominant element to consist of the terms, 'bar' and 'bee.'" The Board found that the marks "are not sufficiently similar to weigh in favor of a likelihood of confusion."

We agree with Applicant that its mark conveys a different meaning when the compound word BARBEE is considered as a whole, i.e., in combination with the logo consisting of a bee inside a martini glass, i.e., that of a worker bee at a bar. The record shows that BARBIE, on the other hand, is a nickname for the doll, whose full name is Barbara Millicent Roberts, and, as a result, it conveys the impression of a doll named BARBIE.

Balancing the relevant DuPont factors, the Board concluded that confusion is not likely.

Dilution by Blurring: The Board found the mark BARBIE to be famous, for dilution purposes, in connection with dolls. "The duration, extent, and geographic reach of the advertising and publicity of Opposer’s BARBIE mark is exceptional . . . and has resulted in the BARBIE mark remaining in the eye of the general public for decades." However, "Applicant’s BARBEE and Design mark is dissimilar from Opposer’s BARBIE mark in appearance, meaning and commercial impression such that the former does not readily conjure up the latter." Furthermore, there was no evidence that Applicant intended to create an association with Mattel's BARBIE mark.

And so, Mattel failed to prove dilution by blurring.

Dilution by Tarnishment: "Inasmuch as we have determined that the marks are dissimilar, Opposer has not established that its mark will suffer any negative association by Applicant’s mark. In view of the foregoing, Opposer has failed to prove its claim of dilution by tarnishment under Section 43(c) of the Trademark Act, 15 U.S.C. § 1125(c), by a preponderance of the evidence."

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TTABlogger comment: I think it's fair to say that "BARBIE" is a household word. But fame only gets one so far. The marks still have to be “sufficiently similar” while applying "the same test as for determining the similarity or dissimilarity of the marks in the likelihood of confusion analysis,” so that the required association exits. See, for example Nike, Inc. v. Peter Maher and Patricia Hoyt Maher, 100 USPQ2d 1018 (TTAB 2011) [TTABlogged here].

Text Copyright John L. Welch 2026.