Mattel, Inc. v. BarBee Inc.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Mailed: February 6, 2026
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Mattel, Inc.
v.
BarBee Inc.
_____
Opposition No. 91281982
_____
Brian D. Wassom of Warner Norcross + Judd LLP,
for Mattel, Inc.
Rexford Brabson and David Stewart of T-Rex Law PC,
for BarBee Inc.
_____
Before Allard, Elgin, and Stanley,
Administrative Trademark Judges.
Opinion by Allard, Administrative Trademark Judge:
BarBee Inc. (“Applicant”) seeks registration on the Principal Register of the
composite word and design mark (“INC.” disclaimed) for “Online

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social networking services accessible by means of downloadable mobile applications,”
in International Class 45.1
Mattel, Inc. (“Opposer”) has opposed registration of Applicant’s mark on the basis
of priority and likelihood of confusion under Section 2(d) of the Trademark Act, 15
U.S.C. § 1052(d), based on its common law rights in and ownership of forty registered
BARBIE and BARBIE-formative marks for a wide variety of goods and services,
including:
• BARBIE (in typeset form) for “Doll,” in International Class 28;2
• BARBIE (in typeset form) for “doll clothes and doll accessories,” in
International Class 28;3 and
• BARBIE (in typeset form) for “providing educational and entertainment
services via a global computer network web site featuring stories, games, and
directories for toys and games, intended for adults and children.”4
1 Application Serial No. 97081593 was filed on October 19, 2021, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based upon Applicant’s allegation of a bona fide
intention to use the mark in commerce. The mark is described as “consist[ing] of a solid black
square background featuring the stylized wording BarBee with Bar in white and Bee in
orange centered above the stylized smaller wording INC. in white below a stylized white
martini glass with a splashing orange liquid emitting an orange bee design consisting of
orange antennas, an orange-outlined circular head, wings and body with 2 orange horizontal
lines.” The colors black, white, and orange are claimed as a feature of the mark.
2 1 TTABVUE 20. Reg. No. 689055, issued December 1, 1959; maintained. 22 TTABVUE 5-
10.
The mark is registered in typeset form. “Standard character” marks were previously known
as “typed” or “typeset” marks. In re Viterra Inc., 671 F.3d 1358, 1363 n.2 (Fed. Cir. 2012). A
typed or typeset mark is the legal equivalent of a standard character mark. TRADEMARK
MANUAL OF EXAMINING PROCEDURE (TMEP) § 807.03(i) (2025).
Citations to the record and briefs reference TTABVUE, the Board’s online docket system.
Specifically, the number preceding TTABVUE corresponds to the docket entry number, and
any numbers following TTABVUE refer to the page number(s) of that particular docket entry.
3 1 TTABVUE 21. Reg. No. 768397, issued April 21, 1964; maintained. 22 TTABVUE 22-27.
For an explanation of typeset form, see discussion supra note 2.
4 1 TTABVUE 22. Reg. No. 2495195, issued October 9, 2001; maintained. 22 TTABVUE 87-
89. For an explanation of typeset form, see discussion supra note 2.

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Opposer also claims that its BARBIE mark is both distinctive and famous, that it
became famous within the meaning of 15 U.S.C. § 1125(c) “well before both the filing
date of the opposed Application, and before any first use alleged by Applicant[,]” and
that any use by Applicant of its mark is likely to cause dilution by blurring and
tarnishment under Section 43(c) of the Trademark Act, 15 U.S.C. § 1125(c).5
In its Answer, Applicant denied the salient allegations of the Notice of
Opposition.6
The matter is fully briefed.7 Opposer bears the burden of proving its claims by a
preponderance of the evidence. See Genesco Inc. v. Martz, No. 91121296, 2003 TTAB
LEXIS 123, at *22 (claims of priority and likelihood of confusion and dilution must
be proven by a preponderance of the evidence). Having considered the evidentiary
record, the parties’ arguments and applicable authorities, we find that Opposer has
not carried this burden. We dismiss the opposition.
I. Opposer’s Motion to Amend its Notice of Opposition to Add
Claims
On January 31, 2025, one day before the expiration of its rebuttal period,8 Opposer
filed a motion seeking to amend its Notice of Opposition under Rule 15 of the Federal
5 1 TTABVUE 19-20, 25-26 (paras. 4-9, 21-28).
6 4 TTABVUE 4-7. Applicant’s purported affirmative defenses are not true affirmative
defenses, but rather constitute amplifications of Applicant’s denials of the allegations of
likelihood of confusion and likelihood of dilution, and, as a result, are permissible. See e.g.,
ProMark Brands, Inc. v. GFA Brands, Inc., No. 91194974, 2015 TTAB LEXIS 67, at *5 n.11.
7 Opposer’s opening brief appears at 49 TTABVUE, Applicant’s brief appears at 50
TTABVUE, and Opposer’s reply brief appears at 51 TTABVUE.
8 40 TTABVUE 1 (denoting that rebuttal periods ends February 1, 2025).

Opposition No. 91281982
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Rules of Civil Procedure to add two grounds for opposition to conform to the trial
evidence, namely, that (1) “[A]pplicant Barbee Inc. lacked the bona fide intent to use
the applied-for mark under 15 U.S.C. § 1051(b) because it has never existed, and
(2) even if, in the alternative, the entity Barbee LLC ever had any cognizable rights
in the Application, it has abandoned those rights by ceasing to exist.”9 The Board
deferred consideration of Opposer’s Motion to Amend its Notice of Opposition until
final decision.10 Inasmuch as Opposer did not pursue its claim based of abandonment
in its brief, i.e., its alternative position set out in part (2),11 we need not consider it.
See, e.g., Swatch AG (Swatch SA) (Swatch Ltd.) v. M.Z. Berger & Co., No. 91187092,
2013 TTAB LEXIS 515, at *2 n.3 (opposer’s pleaded claims not argued in its brief
deemed waived), aff’d, 787 F.3d 1368 (Fed. Cir. 2015).
Therefore, we are left to consider whether the Notice of Opposition should be
amended to conform to the trial evidence to add the ground set forth in part (1) above,
i.e., Opposer’s claim that Applicant lacked the bona fide intent to use the involved
mark because it never existed.
Specifically, Opposer seeks to amend its Notice of Opposition to add the following:
9 44 TTABVUE 2 (italics in original, bold here).
10 44, 48 TTABVUE.
11 Opposer’s failure to pursue this claim is understandable. As mentioned in this Board’s
previous order (48 TTABVUE 1 n.1), an abandonment claim is not available against the
involved application inasmuch as it is based on Section 1(b) of the Trademark Act, 15 U.S.C.
§ 1051(b) and no statement of use has been filed. See Qualcomm Inc. v. FLO Corp., No.
91182244, 2010 TTAB LEXIS 52, at *4 (“With respect to the ground of abandonment, this
ground is not available when the opposed application is based on Section 1(b). Use of a mark
that is the subject of an application alleging a bona fide intent to use is not required until the
applicant files a statement of use.”).

Opposition No. 91281982
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No Bona Fide Intent to Use, 15 U.S.C. § 1051(b)
36. Opposer incorporates herein by reference each of the
foregoing paragraphs.
37. The Application identifies a nonexistent entity as the
owner of Applicant’s Mark.
38. The Applicant, BarBee Inc., did not have a bona fide
intention to use the mark in commerce at the time the
Application was filed because it did not exist.12
Applicant opposes the motion, arguing that the proposed amendment comes far
too late in the proceeding and is prejudicial.13 Moreover, Applicant adds, Barbee LLC
is active and has continuously maintained rights in the mark and attaches to its
motion evidence of its “corporate reactivation,” which consists of an invoice for
services consisting of “Standard Florida Reinstatement filing.”14
Fed. R. Civ. P. 15(b), as made applicable by Trademark Rule 2.116(a), 37 C.F.R.
§ 2.116(a), provides in pertinent part:
When an issue not raised by the pleadings is tried by the
parties’ express or implied consent, it must be treated in all
respects as if raised in the pleadings. A party may move—
at any time, even after judgment—to amend the pleadings
to conform them to the evidence and to raise an unpleaded
issue. But failure to amend does not affect the result of the
trial of that issue.
Id.; see also TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP)
§ 507.03(b) (2025) (“When issues not raised by the pleadings are tried by the express
or implied consent of the parties, unless prohibited by 37 C.F.R. § 2.107, the Board
12 44 TTABVUE 19 (italics in original, bold here).
13 46 TTABVUE 3-4.
14 46 TTABVUE 4, 9.

Opposition No. 91281982
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will treat them in all respects as if they had been raised in the pleadings. … Any
amendment of the pleadings necessary to cause them to conform to the evidence and
to raise the unpleaded issues may be made upon motion of any party at any time,
even after judgment, but failure to so amend will not affect the result of the trial of
these issues.”).
Thus, to decide the motion to amend to conform to the evidence, we must
determine whether the putative claims were tried by express or implied consent
under Fed. R. Civ. P. 15(b)(2). See Hangzhou Mengku Tech. Co. v. Shanghai
Zhenglang Tech. Co., No. 91272143, 2024 TTAB LEXIS 575, at *16.
It is clear from Applicant’s opposition to the motion to amend that it did not
expressly consent to the trial of the unpleaded claim. As for whether there was
implied consent, such can be found only where the non-moving party (1) raised no
objection to the introduction of evidence on the issue, and (2) was fairly apprised that
the evidence was being offered in support of the unpleaded issue. See Moke Am. LLC
v. Moke USA, LLC, No. 91233014, 2020 TTAB LEXIS 18, at *32-33; Morgan Creek
Prods. Inc. v. Foria Int’l Inc., No. 91173806, 2009 TTAB LEXIS 445, at *11; Boise
Cascade Corp. v. Cascade Coach Co., 1970 TTAB LEXIS 371, at *5-6 (“Generally
speaking, there is an implied consent to contest an issue if there is no objection to the
introduction of evidence on the unpleaded issue, as long as the adverse party was
fairly informed that the evidence went to the unpleaded issue.”). The question of
whether an issue was tried by consent is basically one of fairness. Morgan Creek, 2009

Opposition No. 91281982
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TTAB LEXIS 445, at *16. “The non-moving party must be aware that the issue is
being tried, and therefore there should be no doubt on this matter.” Id.
The parties agree that the question about Applicant’s corporate existence at the
time the subject application was filed was first raised during Opposer’s testimony
cross-examination of David Wayne Muirhead, Applicant’s founder.15 However, during
cross-examination, counsel for Applicant objected to a series of questions, including
those regarding an interview that Mr. Muirhead gave to an entity in the United
Kingdom referred to by the parties as “Channel 4,”16 which centered on the present
opposition proceeding.17 Applicant’s counsel offered two bases for the objection to
questions about the UK interview: (1) this issue, raised on cross-examination,
improperly extended beyond the scope of direct examination, and (2) was properly the
subject of a discovery deposition, not testimony cross-examination.18
As part of this line of questioning about the UK program, the following exchange
took place about Applicant’s name:
15 Q And quite often you just call it BarBee; right?
16 A Not at all. Not at all. It’s BarBee, Inc. That’s
17 what I always say, BarBee, Inc.
18 Because our business -- our actual
15 44 TTABVUE 3; 46 TTABVUE 3; 41 TTABVUE 6, 7.
16 Opposer’s counsel stated that the interview that Mr. Muirhead gave in the UK was
conducted by “Channel 4.” 41 TTABVUE 11 (Muirhead Cross-Examination Transcript
(“Muirhead Cross Ex. Tr.”) 9:22-23).
17 41 TTABVUE 11-16 (Muirhead Cross Ex. Tr. 9:22-14:3).
18 41 TTABVUE 11, 12-13 (Muirhead Cross Ex. Tr. 9:22-10, 10:17-11:14).

Opposition No. 91281982
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19 business license is BarBee, LLC. So BarBee, Inc.
20 is just BarBee, Incorporated.
21 Actually, I always just say BarBee,
22 Incorporated. But we couldn’t be incorporated
23 because we’re an LLC. That’s where that confusion
24 came from.
25 Q Right. That whole interview with Channel 4, it was
1 referred to as BarBee; right?· I don’t think the
2 word “Inc.” was ever used.
·3 A We’re going to have to go back and dissect that
4 sucker, because I’m just going to have to see if it
5 was used.19
We deny Opposer’s motion to amend its pleading. Not only was this line of
questioning objected to by Applicant, Applicant’s statement that the evidence was
properly the subject of a discovery deposition suggests to us that Applicant considered
the information a new issue. Moreover, this line of questioning, which concluded with
counsel asking if Applicant was referred to as simply as “BarBee,” was likely
construed as questions to determine the dominant term of Applicant’s mark, not the
basis of a new claim as to whether a particular entity had a bona fide intent to use
the mark. No redirect examination of Mr. Muirhead was taken, further indicating
that Applicant did not consider the issue as having been tried. See Morgan Creek,
19 41 TTABVUE 46-47 (Muirhead Cross Ex. Tr. 44:15-45:5). See 44 TTABVUE 3.

Opposition No. 91281982
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2009 TTAB LEXIS 445, at *16 (“The fact that applicant took no redirect after the
testimony with respect to dress shirts was elicited on cross examination is a further
indication that applicant did not regard the issue of fraud as having been tried.”).
Opposer’s notice of reliance does not support Opposer’s position. Opposer’s Fifth
Notice of Reliance states that the documents submitted therewith consisting of
records from the Florida Division of Corporations are offered to show that “Barbee
Inc. does not exist and that ‘Barbee LLC’ has been dissolved.”20 This same notice of
reliance states that select office actions and an examiner’s amendment issued during
the prosecution of the involved application demonstrate that Applicant “was given
the opportunity to correctly identify itself, and chose to identify as ‘Barbee Inc.”21
While the notice of reliance may be fairly read to indicate that Opposer contends
Applicant has misidentified itself and that its corporate entity may have been
administratively dissolved, this hardly puts Applicant on notice that Opposer intends
to claim that Applicant lacked the requisite intent to use the mark in commerce as of
the application filing date.
On this record, Opposer has not demonstrated that Applicant was fairly apprised
that the evidence was being offered in support of the unpleaded issue. For these
reasons, Opposer’s motion to amend is denied.
20 43 TTABVUE 2.
21 43 TTABVUE 2.

Opposition No. 91281982
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II. The Record
The record consists of the pleadings, and, by operation of Trademark Rule
2.122(b)(1), 37 C.F.R. § 2.122(b)(1), the file history of the involved application.
In addition, Opposer introduced the following evidence during its case-in-chief:
• Opposer’s First Notice of Reliance on Trademark Status & Document
Retrieval (TSDR) printouts of Opposer’s pleaded registrations.22
• Opposer’s Second Notice of Reliance on TSDR printouts of additional,
unpleaded registrations owned by Opposer, all shown as active.23
• Opposer’s Third Notice of Reliance on TSDR printouts of additional,
unpleaded registrations owned by Opposer, all shown as cancelled.24
• Opposer’s Fourth Notice of Reliance on Applicant’s responses to select
discovery requests propounded by Opposer.25
• Testimony Declaration of Matt Brutocao, Vice President, Global Brand
Marketing, Barbie at Mattel, Inc., with related exhibits (“Test. Decl.
Brutocao”).26
Applicant, during its case-in-chief, introduced the following evidence:
• Applicant’s Notice of Reliance on (1) Opposer’s responses to select discovery
requests propounded by Applicant; and (2) printouts of Opposer’s website.27
22 22 TTABVUE. Some registrations are shown as cancelled: Reg. Nos. 2588845, 4339722,
5112553, 5222835, 5233647 and 5233649. 22 TTABVUE 169-208. In its brief Opposer
acknowledges an additional registration has since cancelled: Registration No. 5318480. 49
TTABVUE 27 n.75. These cancelled registrations have little probative value. Made in Nature,
LLC v. Pharmavite LLC, No. 91223352, 2022 TTAB LEXIS 251, at *31 (“A cancelled or
expired registration has no probative value other than to show that it once issued and it is
not entitled to any of the statutory presumptions of Trademark Act Section 7(b).”).
23 23 TTABVUE.
24 24 TTABVUE. As mentioned, cancelled registrations have little probative value. Made in
Nature, 2022 TTAB LEXIS 251, at *31.
25 26 TTABVUE.
26 27, 28, 29 TTABVUE.
27 32 TTABVUE.

Opposition No. 91281982
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• Testimony Declaration of David Wayne Muirhead, Applicant’s founder
(“Test. Decl. Muirhead”).28
In rebuttal, Opposer offered the following evidence:
• Opposer’s Fifth Notice of Reliance on (1) records from the Florida Division
of Corporations website, and (2) select documents from the application file
of the involved application.29
• Transcript of the cross examination of Mr. Muirhead and related exhibits.30
III. Entitlement to a Statutory Cause of Action
Although Applicant does not dispute Opposer’s entitlement to a statutory cause of
action or even address the issue in its brief, it is a necessary element of the plaintiff’s
case in every inter partes proceeding. Corcamore, LLC v. SFM, LLC, 978 F.3d 1298,
1302-07 (Fed. Cir. 2020). To establish entitlement to a statutory cause of action, a
plaintiff must demonstrate: (i) an interest falling within the zone of interests
protected by the statute, and (ii) a reasonable belief in damage proximately caused
by the registration of the mark. See Meenaxi Enter., Inc. v. Coca-Cola Co., 38 F.4th
1067, 1070 (Fed. Cir. 2022) (citing Lexmark Int’l, Inc. v. Static Control Components,
Inc., 572 U.S. 118, 129, 132 (2014)); Corcamore, 978 F.3d at 1303.
Opposer has properly made of record its active, pleaded registrations for marks
consisting of and including the term BARBIE, showing their current status and title,
which are sufficient to support a plausible claim of likelihood of confusion and
28 33 TTABVUE.
29 43 TTABVUE. Because documents from the prosecution file of the involved application are
automatically of record, it was not necessary for Opposer to submit copies from it under a
notice of reliance. Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1).
30 41, 45 TTABVUE.

Opposition No. 91281982
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dilution.31 This evidence establishes Opposer’s entitlement to a statutory cause of
action. Cunningham v. Laser Golf Corp., 222 F.3d 943, 945-46 (Fed. Cir. 2000)
(registration establishes “standing”); Spotify AB v. U.S. Software Inc., No. 91243297,
2022 TTAB LEXIS 2, at *21-22 (“Opposer’s pleaded registration … and prior use …
establish that it is entitled to oppose registration of Applicant’s mark on the grounds
of likelihood of confusion and dilution.”); N.Y. Yankees P’ship v. IET Prods. & Servs.,
Inc., No. 91189692, 2015 TTAB LEXIS 96, at *8 (“Opposer’s [entitlement] is
established with respect to its likelihood of confusion and dilution claims by its
registrations … which the record shows to be valid and subsisting, and owned by
Opposer.”).
IV. Priority and Likelihood of Confusion
We turn first to Opposer’s Section 2(d) ground of opposition. To prevail, Opposer
must prove ownership of a registration and/or priority of use, and likelihood of
confusion. Barbara’s Bakery, Inc. v. Landesman, No. 91157982, 2007 TTAB LEXIS 9,
at *6. We consider each element in turn below.
A. Priority
Opposer argues it has priority based solely on its forty pleaded BARBIE and
BARBIE-formative marks, all of which Opposer summarizes in a chart in its brief.32
Because TSDR printouts of Opposer’s pleaded, active registrations are of record and
31 22 TTABVUE. We do not include Opposer’s pleaded, cancelled registrations in our analysis.
See supra note 22 for a list of Opposer’s pleaded registrations that stand cancelled.
32 49 TTABVUE 10-12.

Opposition No. 91281982
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there are no pending counterclaims to cancel any of them, priority is not at issue with
respect to the marks shown in the registrations and the goods or services covered by
them.33 King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 1402 (CCPA
1974).
Applicant, for its part, does not dispute that Opposer has priority with regard to
its pleaded, valid and subsisting registrations.34 However, Applicant argues that
“Opposer has not relied explicitly on other unregistered common law trademark
rights for its claims of priority ….”35 In its reply brief, Opposer does not address this
issue, instead offering a conclusory comment about having pleaded common law
rights, which it tucks in a footnote: “Opposer also pleads ‘its extensive common law
rights,’” quoting its Notice of Opposition.36 Opposer’s only other mention of priority
in its reply brief is a single vague statement in its conclusion: “Opposer has
established prior rights in the use of the famous BARBIE mark ….”37
33 22 TTABVUE 5-119, 130-68. We do not include Opposer’s pleaded but now-cancelled
registrations in our analysis. See supra note 22.
34 50 TTABVUE 7.
35 50 TTABVUE 7.
36 51 TTABVUE 10, n.16.
It is well-settled that “[a] plaintiff must plead (and later prove) priority of use.” TBMP
§ 309.03(a)(2) and authorities cited therein. Factual allegations made in the pleadings are
not evidence of the matters alleged except insofar as they might be deemed to be admissions
against interest, which this is not. Baseball Am. Inc. v. Powerplay Sports, Ltd., No. 91120166,
2004 TTAB LEXIS 443, at *5 n.6 (factual allegations made in the pleadings are not evidence
of the matters alleged, except insofar as they might be deemed to be admissions against
interest). While we agree that Opposer properly alleged its reliance on its common law use of
BARBIE and BARBIE-formative marks in its Notice of Opposition (1 TTABVUE 20 (para.
10)), Opposer did not advance this argument in its trial briefs.
37 51 TTABVUE 14.

Opposition No. 91281982
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To establish common law priority based on use, Opposer must prove by a
preponderance of the evidence that the claimed mark is distinctive, inherently or
otherwise, and priority of use of that mark in connection with specific goods or
services. See Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317 (CCPA 1981).38
In support of its likelihood of confusion claim, Opposer argued that Applicant’s goods
are related to Opposer’s “downloadable mobile applications.”39 Because Opposer
failed to argue in its brief that it has priority based on prior common law use on any
of its BARBIE or BARBIE-formative marks for these goods, Opposer’s claim of
likelihood of confusion based on its common law rights is deemed waived. Cf., Monster
Energy Co. v. Lo, No. 91225050, 2023 TTAB LEXIS 14, at *3-4 (opposer’s lack of bona
fide intent to use claim and the family of marks portion of its likelihood of confusion
claim were not argued in brief and were deemed waived); Bell’s Brewery, Inc. v.
Innovation Brewing, No. 91215896, 2017 TTAB LEXIS 452, at *20-21 (opposer’s
failure in its main brief to argue likelihood of confusion claim based on one of two
marks pleaded in its notice of opposition resulted in waiver of that claim based on
that mark); Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc., No. 92050879,
2013 TTAB LEXIS 347, at *6 (petitioner’s pleaded descriptiveness and geographical
38 There has been no issue raised as to the distinctiveness of the mark BARBIE for any of
Opposer’s goods or services, and thus we find it to be inherently distinctive. To the extent
Applicant addresses the issue of distinctiveness, which it does in the context of Opposer’s
dilution by blurring claim, Applicant acknowledges that “the degree of … distinctiveness of
the famous [BARBIE] mark” “may not favor Applicant.” 50 TTABVUE 32.
39 49 TTABVUE 28.

Opposition No. 91281982
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descriptiveness claims not argued in brief deemed waived deemed waived), aff’d, 565
F. App’x 900 (Fed. Cir. 2014) (mem.).
Even considering the testimony of Opposer’s witness Mr. Brutocao,40 we find that
it does not support a claim of priority based on common law use inasmuch as it is too
vague and nonspecific to associate use of any of the BARBIE or BARBIE-formative
marks with any particular date of use and it is not supported by sufficient
documentary evidence to clarify the testimony. B.R. Baker Co. v. Lebow Bros., 150
F.2d 580 (CCPA 1945) (testimony to establish prior use of a mark “should not be
characterized by contradictions, inconsistencies, and indefiniteness but should carry
with it conviction of its accuracy and applicability.”).
Accordingly, we find that Opposer has established priority only with respect to the
marks and goods and services reflected in its active, pleaded registrations. We
therefore base our likelihood of confusion determination on Opposer’s active, pleaded
registered marks for the goods and services identified therein and do not consider
Opposer’s arguments based on its common law marks.
B. Likelihood of Confusion
Having established Opposer’s priority with respect to its pleaded, active
registrations, we are left to determine whether Opposer has proven confusion is likely
by evaluating the evidence bearing on the factors listed in In re E.I. du Pont de
Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973) (“DuPont”). See also In re Majestic
40 27 TTABVUE 28-29 (Test. Decl. Brutocao, paras. 79-80 and related exhibits).

Opposition No. 91281982
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Distilling Co., 315 F.3d 1311, 1315 (Fed. Cir. 2003). We consider each DuPont factor
for which there is evidence and argument. See, e.g., In re Guild Mortg. Co., 912 F.3d
1376, 1379-80 (Fed. Cir. 2019). Varying weights may be assigned to each DuPont
factor depending on the evidence presented. See Citigroup Inc. v. Cap. City Bank Grp.,
Inc., 637 F.3d 1344, 1355 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 1206
(Fed. Cir. 1993) (“[T]he various evidentiary factors may play more or less weighty
roles in any particular determination.”).
In any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the similarities between the goods or services. See Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103 (CCPA 1976) (“The
fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods and differences in the marks.”).
Recall that we previously determined that Opposer established priority only as to
its active, pleaded registrations. Because there are over thirty of them, we narrow
our focus, as Opposer does, to two groups. One group consists of the registrations for
BARBIE marks for dolls, doll clothes and doll houses (Reg. Nos. 689055 and 768397),
which we find herein to be very commercially strong. The other group consists of those
registered marks that Opposer selected to serve as the basis for its comparison of the
goods and services under the second DuPont factor: Reg. Nos. 2495195, 5346799,
5441651, 5602186, 6267201, 6267202, and 6800290 (“Compared Marks” or

Opposition No. 91281982
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“Compared Registrations”).41 Specifically, the Compared Registrations consist of the
following:
• BARBIE (in typeset form) for “providing educational and entertainment
services via a global computer network web site featuring stories, games, and
directories for toys and games, intended for adults and children” (Reg. No.
2495195);42
• BARBIE DREAMTOPIA (in standard characters) for “entertainment, namely,
animated series featuring stories for children” (Reg. No. 5346799);43
• BARBIE LIVE! IN THE DREAMHOUSE (in standard characters) for
“entertainment services, namely, providing online webisodes and non-
downloadable videos featuring children’s entertainment” (Reg. No. 5441651);44
• BARBIE DREAMHOUSE ADVENTURES (in standard characters) for
“entertainment services, namely, providing non-downloadable videos featuring
children’s entertainment; providing an online computer game” (Reg. No.
5602186);45
• BARBIE (in standard characters) for “digital media, namely, pre-recorded
DVDs and downloadable audio and video recordings featuring children’s
entertainment” (Reg. No. 6267201);46
• BARBIE (in standard characters) for “entertainment services, namely,
providing non-downloadable animated movies, on-going television programs
and non-downloadable webisode series, all featuring children's entertainment
provided via a global computer network and via streaming services; providing
online computer games and providing a website featuring non-downloadable
photos and non-downloadable videos, and information in the field of toys,
games and children's entertainment” (Reg. No. 6267202);47 and
41 49 TTABVUE 27-28.
42 49 TTABVUE 27; 22 TTABVUE 87-89.
43 49 TTABVUE 27; 22 TTABVUE 117-19.
44 49 TTABVUE 27; 22 TTABVUE 133-35.
45 49 TTABVUE 27; 22 TTABVUE 130-32.
46 49 TTABVUE 27; 22 TTABVUE 136-50.
47 49 TTABVUE 27; 22 TTABVUE 151-53.

Opposition No. 91281982
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• (“SERIES” disclaimed) for “entertainment services,
namely, providing ongoing webisodes and television programs featuring
children’s entertainment via the internet and via streaming services” (Reg. No.
6800290).48
If we do not find that the marks are similar and goods and services are related
using the Compared Registrations as our point of comparison, similarity will not be
established for any of the other active, pleaded registrations. See e.g., N. Face Apparel
Corp. v. Sanyang Indus. Co., No. 91187593, 2015 TTAB LEXIS 328, at *20; In re Max
Cap. Grp. Ltd., No. 77186166, 2010 TTAB LEXIS 1, at *5.
1. Strength or Weakness of Opposer’s Mark
We begin by considering the strength, including any fame, of Opposer’s BARBIE
and BARBIE-formative marks as that may affect their scope of protection. See
DuPont, 476 F.2d at 1361. Analysis of the fifth and sixth DuPont factors together
determines the strength of a mark. Spireon, Inc. v. Flex LTD, 71 F.4th 1355, 1362
(Fed. Cir. 2023) (“Two of the DuPont factors (the fifth and sixth) consider strength.”).
“[T]he strength of a mark is not a binary factor” and “varies along a spectrum from
very strong to very weak.” Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334,
1340 (Fed. Cir. 2015) (quoting In re Coors Brewing Co., 343 F.3d 1340, 1345 (Fed. Cir.
2003)).
48 49 TTABVUE 27; 22 TTABVUE 154-68.

Opposition No. 91281982
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In evaluating the strength of a mark, we consider both its conceptual strength,
based on the nature of the mark itself, and if there is probative evidence in the record,
its commercial strength, i.e., its fame, based on marketplace recognition of the mark.
In re Chippendales USA, Inc., 622 F.3d 1346, 1353-54 (Fed. Cir. 2010) (“A mark’s
strength is measured both by its conceptual strength (distinctiveness) and its
marketplace strength (secondary meaning).”); New Era Cap Co. v. Pro Era, LLC, No.
91216455, 2020 TTAB LEXIS 199, at *28-29 (“In determining the strength of a mark,
we consider both its inherent strength, based on the nature of the mark itself, and, if
there is evidence in the record of marketplace recognition of the mark, its commercial
strength.”).
Opposer argues that its “BARBIE mark is both inherently and commercially
strong–indeed, famous.”49 While some of Opposer’s arguments focus specifically on
the BARBIE mark for “dolls,”50 doll clothes and doll accessories,51 and BARBIE THE
MOVIE,52 its remaining arguments are broadly based on the “BARBIE brand”53 and
“[t]he brand and its products,”54 without specifying any particular goods or services
offered under particular marks.
49 49 TTABVUE 29.
50 49 TTABVUE 17, 18, 23, 24.
51 49 TTABVUE 17, 18, 23.
52 49 TTABVUE 20, 21.
53 49 TTABVUE 17, 19, 20, 21, 22, 24, 25.
54 49 TTABVUE 24.

Opposition No. 91281982
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Seeking to limit the impact of Opposer’s fame evidence, Applicant acknowledges
that “Opposer has provided evidence of fame for children’s dolls,” but argues that the
mark’s conceptual strength has been weakened by two third-party registrations.55
a. Conceptual Strength of the Pleaded Marks
Conceptual strength is a measure of a mark’s distinctiveness and may be placed
“in categories of generally increasing distinctiveness: ... (1) generic; (2) descriptive;
(3) suggestive; (4) arbitrary; or (5) fanciful.” Two Pesos, Inc. v. Taco Cabana, Inc., 505
U.S. 763, 768 (1992).
We agree with Opposer that its active, pleaded registrations for BARBIE and
BARBIE-formative marks, including the marks of the Compared Registrations, are
registered on the Principal Register without any claim of distinctiveness under
Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), and that, as a result, each
mark is treated as inherently distinctive.56 Trademark Act Section 7(b), 15 U.S.C.
§ 1057(b); see New Era Cap, 2020 TTAB LEXIS 199, at *29 (“Opposer’s mark is
inherently distinctive as evidenced by its registration on the Principal Register
without a claim of acquired distinctiveness under Section 2(f) of the Trademark Act.”).
Applicant challenges the conceptual strength of the mark, arguing that two
BARBEE registrations owned by a third-party show that Opposer’s BARBIE mark is
conceptually weak.57 Applicant adds that “Opposer itself has admitted that there are
55 50 TTABVUE 30.
56 49 TTABVUE 16 n.24. The TSDR printouts of the active, pleaded registrations appear at
22 TTABVUE 5-119, 130-68.
57 50 TTABVUE 29-30.

Opposition No. 91281982
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two U.S. trademark registrations containing the phrase Barbee in Class 016[,]” and
that, as a result, “Opposer’s rights are not so all-encompassing as to extend to the
term BARBEE as used for any goods.”58
More accurately, the record shows that Opposer admitted it is aware of one third-
party “user[ ] of the word ‘Barbee’ in Class 016” and that this one entity owns two
such registrations.59 Opposer argues that, regardless, Applicant has not made of
record of any evidence of either of these third-party registrations or any evidence of
use of any BARBIE or BARBEE marks.60 Opposer adds that Applicant, for its part,
even admitted that it is unaware of (1) “any third party using the mark BARBIE other
than Opposer,”61 (2) “any third party using a BARBEE-formative mark in commerce
other than [Applicant,]”62 or (3) any marks using the sounds “bar” and “bee” in a mark
in commerce.63
As an initial matter, we disagree with Opposer that third-party registrations
alone are irrelevant because they are not evidence of third-party use of the registered
mark.64 It is well-settled that “third-party registration evidence that does not equate
58 50 TTABVUE 30.
59 32 TTABVUE 15 (Response to Request to Admit Nos. 23-24).
60 49 TTABVUE 35; 51 TTABVUE 8.
61 49 TTABVUE 35; 26 TTABVUE 14 (Applicant’s Response to Opposer’s Request to Admit
No. 25); 26 TTABVUE 29 (Applicant’s Response to Opposer’s Inter. No. 16).
62 49 TTABVUE 35; 26 TTABVUE 15 (Applicant’s Response to Opposer’s Request to Admit
No. 26); 26 TTABVUE 29 (Applicant’s Response to Opposer’s Inter. No. 17).
63 49 TTABVUE 35; 26 TTABVUE 24, 30 (Applicant’s Response to Opposer’s Inter. Nos. 7-8,
18).
64 51 TTABVUE 8.

Opposition No. 91281982
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to proof of third-party use may bear on conceptual weakness if a term is commonly
registered for similar goods or services.” Tao Licensing, LLC v. Bender Consulting
Ltd., No. 92057132, 2017 TTAB LEXIS 437, at *47.
In any event, while such registration evidence would be relevant if it were of
record, we nonetheless agree with Opposer that the record does not contain any
evidence of these third-party registrations. Although we acknowledge that Opposer
admitted that one third-party owns two registrations for the BARBEE mark, Opposer
only admitted that the mark is registered in “Class 016.”65 Accordingly, Applicant has
failed to provide evidence sufficient to diminish the conceptual strength of the
BARBIE marks for dolls, doll clothes and doll houses or the BARBIE and BARBIE-
formative marks of the Compared Registrations.
b. Commercial Strength
Commercial strength or fame of the prior mark, if found, plays a dominant role in
a likelihood of confusion analysis. Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d
1367, 1371 (Fed. Cir. 2002); Recot, Inc. v. Becton, 214 F.3d 1322, 1328 (Fed. Cir. 2000).
“Fame for confusion purposes arises as long as a significant portion of the relevant
consuming public ... recognizes the mark as a source indicator.” Palm Bay Imps., Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1722, 396 F.3d 1369, 1375 (Fed. Cir.
2005).
While fame for dilution is an either/or proposition−it either exists or does
not−fame for likelihood of confusion purposes is a matter of degree. Coach Servs., Inc.
65 32 TTABVUE 15 (Response to Request to Admit Nos. 23-24).

Opposition No. 91281982
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v. Triumph Learning LLC, 668 F.3d 1356, 1367 (Fed. Cir. 2012). Evidence of
commercial strength or fame may be measured indirectly by the volume of sales and
advertising expenditures of the goods and services identified by the mark at issue,
“the length of time those indicia of commercial awareness have been evident[,]”
widespread critical assessments and through notice by independent sources of the
products identified by the marks, as well as the general reputation of the products
and services. Bose Corp., 293 F.3d at 1371-76. However, raw numbers alone may be
misleading. Thus, some context in which to place raw statistics may be necessary, for
example, market share. Id. at 1375-76.
Because of the extreme deference that we accord a famous mark in terms of the
wide latitude of legal protection it receives, and the dominant role fame plays in the
likelihood of confusion analysis, it is the duty of the party asserting that its mark is
famous “to clearly prove it.” Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC,
No. 91160856, 2007 TTAB LEXIS 35, at *12.
Matt Brutocao, Opposer’s Vice President, Global Brand Marketing, Barbie at
Mattel, Inc., testified about the history of the BARBIE mark, the variety of goods and
services offered under it, and its commercial success:
• The first Barbie doll appeared at the American International Toy Fair in
New York City on March 9, 1959 and the first Barbie commercial aired
during The Mickey Mouse Club in 1959. “About 300,000 dolls were sold in
Barbie’s first year.”66
• Over the 65 years since the doll’s debut, Opposer “has produced several
thousand different BARBIE®-branded goods and services, selling a total of
more than two billion BARBIE®-branded dolls and accessories. More than
66 27 TTABVUE 2, 3 (Test. Decl. Brutocao, paras. 2, 6, 9).

Opposition No. 91281982
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100 BARBIE® dolls are sold every minute. In 2021, Mattel shipped 86
million BARBIE dolls.”67
• “[A]bout 92% of American girls ages 3 to 12 have owned a Barbie doll.”68
• “Barbie’s house—the BARBIE DREAMHOUSE® playset … was first
introduced in 1962. To this day, one of them is sold every two minutes.”69
• “There are BARBIE® products in over 50 categories, including food, fitness,
clothing, digital applications, video games, television shows, animated
films, web media, electronics, outdoor toys, books, household products (e.g.
glassware, bags/luggage, cups, mugs, furniture, rugs, candles), beauty
products, jewelry, footwear, food products, and many more.”70
• “Barbie sales have always been strong, reaching $430 million by 1987, and
jumping to $700 million in 1991. Mattel revenues for 1992 were $1.8 billion,
nearly $1 billion of which were generated through Barbie sales.” In a 1994
SEC filing, Mattel noted “sales of Barbie products exceeding $1.0 billion in
volume.”71
• “In 2022, the most recent full fiscal year, Mattel reported the Barbie brand
saw $1.49 billion in gross billings globally. That had been preceded by gross
billings of $1.68 billion in 2021 and $1.35 billion in 2020.”72
• “Barbie has starred in over 30 entertainment titles, including dozens of
animated films released between 2001 and 2024.”73
• “Barbie has also starred in several animated series, including the Netflix
series Barbie: Life in the Dreamhouse (2012-2015), Barbie Dreamhouse
Adventures (2018-2020), Barbie: It Takes Two (2022), and Barbie: A Touch
of Magic (2023-), online webisodes such as Barbie Vlogger (2015-), and
Barbie LIVE! In the Dreamhouse (2017).”74
67 27 TTABVUE 4 (Test. Decl. Brutocao, para. 11).
68 27 TTABVUE 4 (Test. Decl. Brutocao, para. 12).
69 27 TTABVUE 4 (Test. Decl. Brutocao, para. 14).
70 27 TTABVUE 4 (Test. Decl. Brutocao, para. 16).
71 27 TTABVUE 5 (Test. Decl. Brutocao, para. 17) (internal quotation omitted).
72 27 TTABVUE 5 (Test. Decl. Brutocao, para. 20) (internal quotation omitted).
73 27 TTABVUE 6 (Test. Decl. Brutocao, para. 22).
74 27 TTABVUE 7 (Test. Decl. Brutocao, para. 24).

Opposition No. 91281982
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• “In July 2023, Mattel and Warner Bros. released Barbie The Movie,
starring actress Margot Robbie in the title role. The film proved to be an
instant, worldwide cultural sensation. As of the date of the declaration, it
had grossed over $1.435 billion and broken multiple records, including:
a. Highest-grossing film of 2023 in the U.S. and worldwide;
b. Most successful global release in Warner Bros. history;
….
t. Eight Oscar nominations (including for Best Picture) and one Oscar
win, for Best Original Song.”75
• “Mattel spent $50 million-plus on Barbie ads in 2003, and [began]
expanding its marketing strategy beyond the physical doll itself to include
storytelling from the fictional world in which the doll characters live.”76
• “In 2011, Mattel’s Barbie brand was awarded ‘Campaign of the Year’ by
marketing trade publication PR Week at its annual awards gala.”77
• “In February 2022, Barbie (and the Barbie Dreamhouse) starred in the USA
TODAY Ad Meter’s highest-ranked Super Bowl® commercial.”78
• “In April 2022, NASA collaborated with Mattel to bring BARBIE® dolls to
the International Space Station to encourage children to pursue careers in
STEM.”79
• “Barbie has a powerful social media presence with over 19 million followers
across platforms, and saw more than 6 million engagements across social
media in the first six months of 2023 ….”80
• “Barbie’s Facebook page has 14 million likes, and her TikTok page has 2.1
million followers.”81
• “There are over 18 billion minutes of BARBIE®-related user-generated
content created each year.”82
75 27 TTABVUE 8-9 (Test. Decl. Brutocao, para. 27).
76 27 TTABVUE 10 (Test. Decl. Brutocao, para. 30).
77 27 TTABVUE 10 (Test. Decl. Brutocao, para. 31).
78 27 TTABVUE 11 (Test. Decl. Brutocao, para. 35).
79 27 TTABVUE 11 (Test. Decl. Brutocao, para. 36).
80 27 TTABVUE 14 Test. Decl. Brutocao, (para. 43).
81 27 TTABVUE 15 (Test. Decl. Brutocao, para. 47).
82 27 TTABVUE 15 (Test. Decl. Brutocao, para. 48).

Opposition No. 91281982
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• “In October 1996, AdWeek ranked Barbie #87 out of 500 top brands in its
‘America’s Super Brands ‘97’ List.”83
• “In each of 2020 and 2021, Circana (formerly known as the NPD Group), a
leading global information company, named BARBIE® the top global toy
property. Barbie remained #2 on this list in 2022 and 2023.”84
• “The market research firm Brand Finance has ranked Barbie in the top five
most valuable toy brands in the entire world in each of 2021, 2022, and
2023.”85
• “TIME magazine describes Barbie’s ‘brand recognition [as] up there with
Mickey Mouse.’ In short, the Barbie brand is the epitome of a household
name.”86
• “Oscar de la Renta was the first designer collaboration in 1985. Many other
famous designers have since collaborated with the brand, including
Versace, Tarina Tarantino, Anna Sui, Cynthis Rowley, Calvin Klein, Vera
Wang, Diane Von Furstenberg, MAC Cosmetics, Dior, and more. Beginning
in 1990, Bob Mackie created a long line of exquisite, still-sought-after dolls.
To celebrate her 50th anniversary in 2009, Barbie had her own runway show
in the New York Mercedes-Benz Fashion Week, featuring original creations
by 50 notable designers. In 2014, Jeremy Scott’s Moschino show was
inspired by Barbie, complete with her dream wardrobe. In 2019, Barbie was
given the Board of Directors’ Tribute by the Council of Fashion Designers
of America—an award that had previously been bestowed on Michelle
Obama and Gloria Steinem.”87
• “In 1998, the Strong Museum of Play in Rochester, New York launched the
National Toy Hall of Fame, and chose the Barbie doll as part of the Hall’s
inaugural class.”88
83 27 TTABVUE 15 (Test. Decl. Brutocao, para. 51).
84 27 TTABVUE 15 (Test. Decl. Brutocao, para. 52) (footnote omitted).
85 27 TTABVUE 15 (Test. Decl. Brutocao, para. 53).
86 27 TTABVUE 17 (Test. Decl. Brutocao, para. 57) (footnote omitted).
87 27 TTABVUE 19 (Test. Decl. Brutocao, para. 65) (footnote omitted).
88 27 TTABVUE 20 (Test. Decl. Brutocao, para. 67).

Opposition No. 91281982
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• “In 2014, Mattel and Sports Illustrated collaborated in a promotion through
which Barbie appeared on one version of the cover of the magazine’s popular
swimsuit edition.”89
• “In 2015, Barbie launched her first video blog (vlog) on YouTube which
propelled the channel to the #1 doll brand on YouTube. An October 2020
CNN article noted that, ‘With more than 9.6 million subscribers, the official
Barbie page is currently the most watched channel directed at girls on
YouTube.’ Today, the BARBIE® YouTube channel has over 11 million
subscribers, three thousand videos, and 23 billion minutes of content
watched, and is still the #1 girls’ brand on YouTube.”90
• “The Instagram channel @barbiestyle launched in 2014 and quickly
reached over 3.6 million followers.”91
• “Barbie’s Facebook page has 14 million likes, and her TikTok page has 2.1
million followers.”92
In its brief, Applicant admits that Opposer’s mark is commercially strong for
“children’s dolls and the success of the Barbie movie[,]”93 arguing only that Opposer
has shown “no fame of its mark for social networking services, in the context of a
mobile application or otherwise.”94 “Opposer’s alleged fame is in an entirely different
industry sector,” Applicant adds, “and thus is not indicative of a likelihood of
confusion.”95 Applicant did not cross-examine Opposer’s witness, Mr. Brutocao,
89 27 TTABVUE 20 (Test. Decl. Brutocao, para. 68).
90 27 TTABVUE 14 (Test. Decl. Brutocao, para. 44) (footnotes omitted).
91 27 TTABVUE 14 (Test. Decl. Brutocao, para. 46).
92 27 TTABVUE 15 (Test. Decl. Brutocao, para. 47).
93 50 TTABVUE 29 (“Opposer spends much of its brief complimenting itself on how famous
its mark is for children’s dolls and the success of the Barbie movie.”).
94 50 TTABVUE 29.
95 50 TTABVUE 29.

Opposition No. 91281982
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however, nor did Applicant in its brief make any other substantive criticisms of
Opposer’s evidence on the issue of commercial strength.
c. Summary of Strength or Weakness of the Pleaded
BARBIE and BARBIE-Formative Marks
All of Opposer’s active, pleaded BARBIE and BARBIE-formative marks are
registered on the Principal Register without a claim of acquired distinctiveness,
including the BARBIE mark for dolls, doll clothes, and doll houses and the BARBIE
and BARBIE-formative marks of the Compared Registrations, and Applicant was not
successful in diminishing their conceptual strength.
As for commercial strength, we find that Opposer’s BARBIE mark is commercially
very strong for purposes of likelihood of confusion for “dolls” and “doll clothes,” and
“doll houses”. The testimony and evidence regarding the “BARBIE brand” and
“BARBIE products” is not specific enough to support a finding that the mark is
commercially strong. Similarly testimony that “BARBIE® products [are] in over 50
categories, including food, fitness, clothing, digital applications, video games,
television shows, animated films, web media, electronics, outdoor toys, books,
household products (e.g. glassware, bags/luggage, cups, mugs, furniture, rugs,
candles), beauty products, jewelry, footwear, food products, and many more”96 is not
specific enough to support finding that the mark is very commercially strong or
famous for general types of products listed.
96 27 TTABVUE 4 (Test. Decl. Brutocao, para. 16).

Opposition No. 91281982
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Moreover, while it is true that in terms of absolute numbers, the sales figures
about which Mr. Brutocao testified are impressive, one problem is that the testimony
evidence is not always specific to the United States. For example, Mr. Brutocao
testified about “gross billings globally.”97 Sales outside the United States are not
relevant to our analysis. Cf. Hard Rock Cafe Licensing Corp. v. Elsea, No. 93436, 1998
TTAB LEXIS 124, at *13 (“The renown of opposer’s marks outside the United States
or exposure of the foreign public to opposer’s marks is irrelevant [to Section 2(d)
claim].”); Lever Bros. Co. v. Shaklee Corp., No. 61926, 1982 TTAB LEXIS 129, at *9
n.8 (because “any trademark activity outside the United States is ineffective to create
rights within this country, ... evidence of such use is irrelevant to any of the issues in
the Section 2(d)] proceeding before us[.]”). He also testified as to “global” media
impressions.98 Because, for example, there is no evidence as to the extent of U.S.
consumers that saw this content, this evidence, without more, is generally less
probative of the commercial strength of the pleaded BARBIE mark. See e.g., In
re Jasmin Larian, LLC, No. 87522459, 2022 TTAB LEXIS 99, at *39-40 (“English
language material obtained from foreign websites, for example, has been accepted as
competent evidence in trademark examination when it is likely that U.S. consumers
have been exposed to the website or news source.”).
In view of the foregoing, we find that for purposes of the likelihood of confusion
analysis, the BARBIE mark is very commercially strong (indeed “famous” for
97 See e.g., 27 TTABVUE 5 (Test. Decl. Brutocao, para. 20).
98 27 TTABVUE 10 (Test. Decl. Brutocao, para. 32).

Opposition No. 91281982
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purposes of likelihood of confusion) for “dolls,” “clothing for dolls,” and “doll houses,”
and otherwise a strong mark for the goods and services identified in, for example, the
Compared Registrations. That is, to the extent that consumers recognize the BARBIE
mark in connection with these other goods and services, it is a result of the fame of
the BARBIE mark with dolls, doll clothing and doll houses.
2. Similarity or Dissimilarity and Nature of the Parties’ Identified
Goods and Services
We next consider the second DuPont factor, the similarity or dissimilarity of the
parties’ goods and services. DuPont, 476 F.2d at 1361. Because Opposer established
priority only with respect to the marks and the goods and services set out in its active,
pleaded registrations, our determination must be based on the identifications of
services in the involved application and the goods and services in the active, pleaded
registrations focusing, as we mentioned, on the Compared Registrations.99 Stone Lion
Cap. Partners, LP v. Lion Cap. LLP, 746 F.3d 1317, 1322-23 (Fed. Cir. 2014); Octocom
Sys. Inc. v. Hous. Comput. Servs., Inc., 918 F.2d 937, 942 (Fed. Cir. 1990) (“The
authority is legion that the question of registrability of an applicant’s mark must be
decided on the basis of the identification of goods set forth in the application
regardless of what the record may reveal as to the particular nature of an applicant’s
99 To the extent that Opposer argues that the parties’ goods and services are related by virtue
of the similarity of Opposer’s prior common law use of its mark with, for example,
downloadable mobile applications (49 TTABVUE 28) and “social networking accounts” (51
TTABVUE 10 and n.16), these arguments rely entirely on Opposer’s common law rights in
the mark. Inasmuch as Opposer waived the claim of priority based on the prior common law
use of its mark for these goods or services, they are irrelevant to Opposer’s likelihood of
confusion claim and we do not consider them. See discussion supra Section IV(A).

Opposition No. 91281982
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goods, the particular channels of trade or the class of purchasers to which sales of the
goods are directed.”).
It is generally “‘not necessary that the products [and services] of the parties be
similar or even competitive to support a finding of a likelihood of confusion.’” Coach
Servs., 668 F.3d at 1369 (quoting 7-Eleven, Inc. v. Wechsler, No. 91117739, 2007
TTAB LEXIS 58, at *28). Instead, they need only be ‘related in some manner and/or
if the circumstances surrounding their marketing are such that they could give rise
to the mistaken belief that they emanate from the same source.” Id. (quoting 7-
Eleven, 2007 TTAB LEXIS 58, at *28-29).
The relatedness of the parties’ goods and services may be established based on
(1) the language of the involved identifications of goods or services, which may show,
on the face of the identifications, that the goods or services are literally or legally
identical, or otherwise intrinsically related, and (2) evidence of third-party uses or
registrations, which may show that the identified goods or services are commonly
offered by the same entity under the same mark. In re OSF Healthcare Sys., No.
88706809, 2023 TTAB LEXIS 353, at *9-11. See also, Coach Servs., 668 F.3d at 1369
(“[L]ikelihood of confusion can be found ‘if the respective products are related in some
manner and/or if the circumstances surrounding their marketing are such that they
could give rise to the mistaken belief that they emanate from the same source.’”)
(quoting 7-Eleven, 2007 TTAB LEXIS 58, at *28-29).
As an initial matter, we agree with Opposer that because Applicant seeks to
register its mark for use with “online social networking services accessible by means

Opposition No. 91281982
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of downloadable mobile applications,” which is unrestricted as to, for example, the
nature and purpose of its use, we cannot read any limitations into the
identification.100 That is, we cannot limit the identification to use, for example, by bar
owners and employees, a feature that Applicant emphasizes.101 See also Octocom Sys.,
918 F.2d at 942; Squirtco v. Tomy Corp., 697 F.2d 1038, 1043 (Fed. Cir. 1983) (“There
is no specific limitation here, and nothing in the inherent nature of SquirtCo’s mark
or goods that restricts the usage of SQUIRT for balloons to promotion of soft drinks.
The board, thus, improperly read limitations into the registration.”).
In its brief, Opposer makes two arguments that the parties’ goods and services are
related. Opposer argues that the parties’ goods and services are (1) “materially
identical,”102 which Opposer clarifies in its reply brief to mean “legally identical,”103
and (2) also “highly related.”104 We address each in turn.
Recall that the subject application identifies: “Online social networking services
accessible by means of downloadable mobile applications.” As we mentioned earlier,
Opposer focuses its arguments under the second DuPont factor on its Compared
Registrations, details of which we repeat below for convenience:105
100 49 TTABVUE 25-26.
101 See e.g., 50 TTABVUE 7, 10.
102 49 TTABVUE 25.
103 51 TTABVUE 10-11 & n.16.
104 49 TTABVUE 27.
105 Opposer acknowledges that three of the registrations it relied on in its brief to show
relatedness are now cancelled (Reg. Nos. 5233647, 5233649 and 5318480). 49 TTABVUE 27
n.75. See also 22 TTABVUE 188-197, 206-08. Even though they are cancelled, Opposer argues
that “[t]hey are nevertheless admissible and relevant as supplementary evidence of the fact
that Opposer has used its marks with these services.” 49 TTABVUE 27 n.75. While the

Opposition No. 91281982
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• BARBIE (in typeset form) for “providing educational and entertainment
services via a global computer network web site featuring stories, games, and
directories for toys and games, intended for adults and children” (Reg. No.
2495195);106
• BARBIE DREAMTOPIA (in standard characters) for “entertainment, namely,
animated series featuring stories for children” (Reg. No. 5346799);107
• BARBIE LIVE! IN THE DREAMHOUSE (in standard characters) for
“entertainment services, namely, providing online webisodes and non-
downloadable videos featuring children’s entertainment” (Reg. No.
5441651);108
• BARBIE DREAMHOUSE ADVENTURES (in standard characters) for
“entertainment services, namely, providing non-downloadable videos featuring
children’s entertainment; providing an online computer game” (Reg. No.
5602186);109
• BARBIE (in standard characters) for “digital media, namely, pre-recorded
DVDs and downloadable audio and video recordings featuring children’s
entertainment” (Reg. No. 6267201);110
• BARBIE (in standard characters) for “entertainment services, namely,
providing non-downloadable animated movies, on-going television programs
and non-downloadable webisode series, all featuring children's entertainment
provided via a global computer network and via streaming services; providing
online computer games and providing a website featuring non-downloadable
photos and non-downloadable videos, and information in the field of toys,
games and children's entertainment” (Reg. No. 6267202);111 and
cancelled registrations are admissible, we disagree as to their probative value. A cancelled
registration “is not evidence of anything except that the registration issued; it is not evidence
of any presently existing rights in the mark shown in the registration, or that the mark was
ever used.” Kemi Organics, LLC v. Gupta, No. 92065613, 2018 TTAB LEXIS 149, at *17.
Consequently, we have not considered these three cancelled registrations in our relatedness
analysis.
106 49 TTABVUE 27; 22 TTABVUE 87-89.
107 49 TTABVUE 27; 22 TTABVUE 117-19.
108 49 TTABVUE 27; 22 TTABVUE 133-35.
109 49 TTABVUE 27; 22 TTABVUE 130-32.
110 49 TTABVUE 27; 22 TTABVUE 136-50.
111 49 TTABVUE 27; 22 TTABVUE 151-53.

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• (“SERIES” disclaimed) for “entertainment services,
namely, providing ongoing webisodes and television programs featuring
children’s entertainment via the internet and via streaming services” (Reg. No.
6800290).112
In its reply brief, Opposer argues that “Applicant’s description covers any and all
social networking activities conducted through mobile applications, regardless of
industry or field, and thus encompasses, inter alia, entertainment-oriented
socializing for all ages.”113 See e.g., In re Hughes Furniture Indus., No. 85627379, 2015
TTAB LEXIS 65, at *10 (Because Applicant’s broadly worded identification of
“furniture” necessarily encompasses Registrant’s narrowly identified “residential and
commercial furniture,” the goods are legally identical.).
There is no evidence of record that supports Opposer’s characterization of
Applicant’s services as “entertainment-oriented socializing”. Even assuming
Opposer’s characterization of Applicant’s services is accurate, Opposer fails to specify
which of the identifications of the seven registrations making up the Compared
Registrations is encompassed by Applicant’s identification or offer any other evidence
or argument as to how we could arrive at a finding for the same. A quick comparison
of the parties’ identifications convinces us that neither party’s identification of goods
112 49 TTABVUE 27; 22 TTABVUE 154-68.
113 51 TTABVUE 10 (emphasis added).

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or services are encompassed by the other party’s identification. Thus, on this record,
the parties’ goods and services are not legally identical.
Nor are the parties’ goods and services “highly related.” To this end, Opposer
essentially argues that its BARBIE mark appears on both (1) social networks, and
(2) mobile apps, which are “highly related” to Applicant’s “Online social networking
services accessible by means of downloadable mobile applications.114 The fact that the
BARBIE mark may be used on a third-party mobile application, such as Facebook,
Opposer argues, “is a distinction without a difference.”115 We disagree.
Opposer does not identify any social networking mobile application in its
Compared Registrations, and display of its marks on third-party social networking
platforms does not, without more, render the parties’ goods and services “highly
related.”116 Put another way, the use of the BARBIE mark on, for example, Facebook
or Instagram, is not equivalent to Opposer’s offering “online social networking
services” to others.
114 51 TTABVUE 10-11. See also 49 TTABVUE 26-28.
115 51 TTABVUE 11.
116 50 TTABVUE 23-24.
As discussed earlier, Opposer’s arguments based on its use of its marks with its common law
goods, i.e., mobile apps, are irrelevant because Opposer failed to allege and establish priority
as to those common law goods. However, even if we were to consider such mobile applications,
Mr. Brutocao’s testimony and supporting exhibits do not show that the mobile apps have a
social networking feature. 27 TTABVUE 28-29, 29 TTABVUE 110-56 (Test. Decl. Brutocao,
para. 79 and Exs. 80-87). That is, none of the printouts of the apps show that the app user
can engage with other users to play a game, share a fashion creation, or the like, and some
apps promote the fact that they are for use with a “single player,” which is nearly the opposite
of social networking. 29 TTABVUE 122, 132. Thus, this evidence similarly fails to show that
the parties’ goods and services are legally identical or highly related.

Opposition No. 91281982
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Moreover, Opposer 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.117
3. Similarity or Dissimilarity of Established, Likely-to-Continue
Channels of Trade
Next, we consider the third DuPont factor involving the similarity or dissimilarity
of established and likely-to-continue channels of trade. DuPont, 476 F.2d at 1361. As
before, we make our determination based on the goods and services as they are recited
in the involved application and the Compared Registrations. Octocom Sys., 918 F.2d
at 942.
There are no limitations as to the channels of trade in either party’s
identifications. Therefore, we must presume that Applicant’s and Opposer’s goods
and services as identified in the involved application and the Compared Registrations
are marketed in all normal trade channels and to all normal classes of purchasers for
such goods and services. See Inter IKEA Sys. B.V. v. Akea, LLC, No. 91196527, 2014
TTAB LEXIS 166, at *29-33.
Opposer argues that record shows that the parties use “materially identical trade
and marketing channels”118 because Opposer’s BARBIE mobile applications are
117 We hasten to add that, even if we were to find the parties’ goods and services to be related,
it would not change the outcome of this decision because, as discussed infra at
Section IV(B)(5), the marks are so dissimilar that confusion would not be likely.
118 49 TTABVUE 32, 33. We agree with Applicant that, because the parties’ services were not
found to be legally identical (50 TTABVUE 25), Opposer is not entitled to rely on the

Opposition No. 91281982
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“available for download in both the Apple App Store and in Google Play—the two (and
only) online stores through which BarBee’s app is also distributed.”119 We disagree
inasmuch as these arguments, based on Opposer’s common law use of its mark with
mobile applications, are irrelevant because Opposer did not establish priority based
on such use.120
Focusing as we must on the channels of trade for the goods and services identified
in Opposer’s Compared Registrations, Mr. Brutocao testified about the following
channels of trade for the pertinent identified goods and services (i.e., online
educational and entertainment services featuring stories, games, and directories for
toys and games; animated series, webisodes, and online videos; online computer
games; and audio and video recordings, all for children):
• “Barbie has … starred in several animated series, including the Netflix
series Barbie: Life in the Dreamhouse (2012-2015), Barbie Dreamhouse
Adventures (2018-2020), Barbie: It Takes Two (2022), and Barbie: A Touch
of Magic (2023-), online webisodes such as Barbie Vlogger (2015-), and
Barbie LIVE! In the Dreamhouse (2017).”121 This testimony establishes
that streaming services, such as Netflix, are the channels of trade for the
animated series, but it does not specify a channel of trade for the online
webisodes.
• “Barbie was instrumental in demolishing the notion that video games were
exclusively for boys. Scores of BARBIE®-branded video games have been
released for nearly all major platforms and desktop operating systems,
beginning with a 1984 game for the Commodore 64.”122 The supporting
presumption that the channels of trade and classes of consumers are the same (49 TTABVUE
32).
119 49 TTABVUE 33.
120 See discussion supra Section IV(A).
121 27 TTABVUE 7 (Test. Decl. Brutocao, para. 24).
122 27 TTABVUE 7 (Test. Decl. Brutocao, para. 25).

Opposition No. 91281982
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exhibit shows that the platforms include Game Boy, Macintosh Windows,
Windows, and PlayStation.123
• “[T]the live-action reality show Barbie Dreamhouse Challenge aired on
HGTV,”124 a television show.
• “Barbie launched her first video blog (vlog) on YouTube which propelled the
channel to the #1 doll brand on YouTube.”125
• Barbie has her own accounts on Instagram, Facebook and TikTok, but there
is no testimony or evidence that goods or services offered under the
Compared Registrations are offered or marketed on these platforms.126
Applicant, for its part, presented evidence that its mobile application is available
in the Google Play store and the Apple App Store, and that it is marketed through
Applicant’s own website, and on its Facebook, Instagram and TikTok accounts.127
We find that Opposer has failed to establish that the channels of trade overlap.
Here, Opposer offers no evidence that the goods or services identified in its Compared
Registrations are offered in the Google Play store or the Apple App Store, or any app
store for that matter. To the extent that Opposer’s evidence relates to marketing on
Instagram, Facebook or TikTok, we cannot tell from the conclusory testimony what
identified services are actually marketed there. Plus, each party posts from its own
account, that is, Applicant posts on its account, and Opposer posts on its account,
123 27 TTABVUE 207-13 (Exhibit 20 to the Test. Decl. Brutocao).
124 27 TTABVUE 8 (Test. Decl. Brutocao, para. 26).
125 27 TTABVUE 14 (Test. Decl. Brutocao, paras. 44, 45).
126 27 TTABVUE 14-15 (Test. Decl. Brutocao, paras. 46-48).
127 50 TTABVUE 25; 33 TTABVUE 3-6, 15-60 (Test. Decl. Muirhead, paras. 6-9 and Exhibits
B-K).

Opposition No. 91281982
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again precluding overlap. Thus, Opposer has failed to establish that the parties’
channels of trade overlap.128
Applicant acknowledges that Opposer has also marketed its goods and services
(apart from its apps) through the “same social media platforms,”129 but these
arguments are not focused on the goods and services identified in the Compared
Registrations. 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.130 We agree and
consider this far too general of an overlap to have any meaningful impact on the
likelihood of confusion. Cf. Parfums De Coeur, Ltd. v. Lazarus, No. 91161331, 2007
TTAB LEXIS 36, at *30 (“the mere fact that goods and services may both be
advertised and offered through the Internet is not a sufficient basis to find that they
are sold through the same channels of trade.”).
4. Conditions Under Which and Buyers to Whom Sales are Made
The fourth DuPont factor considers the “conditions under which and buyers to
whom sales are made, i.e. ‘impulse’ v. careful, sophisticated purchasing.” DuPont, 476
F.2d at 1361. “[W]e look to the language of the identifications to ascertain the . . .
degree of care in purchasing.” Heil Co. v. Tripleye GmbH, Opp. No. 91277359, 2024
128 We hasten to add that, even if the channels of trade were found to overlap, it would not
change the result of our decision inasmuch as the marks are sufficiently dissimilar that
confusion would not be likely, as discussed infra at Section IV(B)(5).
129 50 TTABVUE 25.
130 50 TTABVUE 25-26.

Opposition No. 91281982
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TTAB LEXIS 494, at *80-81. “A heightened degree of care when making a purchasing
decision may tend to minimize likelihood of confusion,” while “[c]onversely, impulse
purchases of inexpensive items may tend to have the opposite effect.” Id. (citations
omitted).
Opposer’s witness testified that “[a]ll Barbie-branded … online interactive
experiences are available either for free or for a nominal sum.”131 “Downloading is not
only easy, but also consequence-free[,]” argues Opposer, adding, “a customer knows
they can always just delete an app they no longer wish to use. Therefore, customers
already conditioned to recognize the BARBIE® mark and who are interested in
exploring what an app offers will have virtually no hesitation in downloading
BarBee’s app based only on their initial assumption that it is related to the BARBIE®
brand.”132
Applicant’s app, when it is offered, is available for free on Google Play and the App
Store.133
The identifications of goods and services in the involved application and the
Compared Registrations contain no limitations as to price points, so we must presume
that the identified goods and services include content that is available for free as well
as for a low price. Because the goods and services in the involved application and the
131 49 TTABVUE 34; 27 TTABVUE 30 (Test. Dec. Brutocao, para. 85).
132 49 TTABVUE 34.
133 33 TTABVUE 31-37.

Opposition No. 91281982
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Compared Registrations may be accessed for free or very low cost, they may be subject
to impulse download or purchase.
5. Similarity or Dissimilarity of the Marks
We now turn to the first DuPont factor, which assesses the similarity or
dissimilarity of the marks. DuPont, 476 F.2d at 1361. We consider “the marks in their
entireties as to appearance, sound, connotation and commercial impression.” Viterra,
671 F.3d at 1362 (quoting DuPont, 476 F.2d at 1361). “Similarity in any one of these
elements may be sufficient to find the marks confusingly similar.” In re Inn at St.
John’s, LLC, No. 87075988, 2018 TTAB LEXIS 170, at *13 (quoting In re Davia, No.
85497617, 2014 TTAB LEXIS 214, at *4), aff’d per curiam, 777 Fed. Appx. 516 (Fed.
Cir. 2019).
The proper test “is not a side-by-side comparison of the marks, but instead
whether the marks are sufficiently similar in terms of their commercial impression
such that persons who encounter the marks would be likely to assume a connection
between the parties.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373 (Fed. Cir. 2018)
(quoting Coach Servs., 668 F.3d at 1368). “[S]imilarity is not a binary factor but is a
matter of degree.” In re St. Helena Hosp., 774 F.3d 747, 752 (Fed. Cir. 2014) (quoting
Coors Brewing, 343 F.3d at 1344).
Because the similarity or dissimilarity of the marks is determined based on the
marks in their entireties, the analysis cannot be predicated on dissecting the marks
into their various components; that is, the decision must be based on the entirety of
the marks, not just part of the marks. Nonetheless, there is nothing improper in
stating that, for rational reasons, more or less weight has been given to a particular

Opposition No. 91281982
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feature of a mark, provided the ultimate conclusion rests on a consideration of the
marks in their entireties. Stone Lion, 746 F.3d at 1322. The focus is on the recollection
of the average purchaser, who normally “retains a general rather than a specific
impression of marks.” In re i.am.symbolic, llc, No. 85916778, 2018 TTAB LEXIS 281,
at *11-12.
Applicant seeks to register , a composite mark. As an initial matter
and as is typically the case, we find that the literal elements BARBEE INC. are the
dominant elements of Applicant’s mark notwithstanding the accompanying design.
See Viterra, 671 F.3d at 1366 (“[T]he verbal portion of a word and design mark likely
will be the dominant portion.”). Here, the image of the martini glass reinforces the
BAR portion of the mark, while the image of the bee reinforces the BEE element of
the mark. For these reasons, the image is the subordinate portion of the mark.
Focusing on the literal elements BARBEE INC., we find that the BARBEE portion
is dominant. It is the largest literal element in the mark, appearing in a much larger
font size than the INC. element, and it is also the first term in the mark. See e.g.,
Palm Bay, 396 F.3d at 1372 (finding similarity between VEUVE ROYALE and two
VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent
feature’ as the first word in the mark and the first word to appear on the label”);
Century 21 Real Est. Corp. v. Century Life of Am., 970 F.2d 874, 876 (Fed. Cir.
1992) (upon encountering the marks, consumers will first notice the identical lead

Opposition No. 91281982
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word); Presto Prods., Inc. v. Nice-Pak Prods., Inc., No. 74797, 1988 TTAB LEXIS 60,
at *7-8 (“[I]t is often the first part of a mark which is most likely to be impressed upon
the mind of a purchaser and remembered ….”). Moreover, Applicant’s disclaimer of
the generic or descriptive term INC. further supports our finding, as generic or
descriptive, disclaimed terms have less source-identifying significance. See e.g., In re
Chatam Int’l, Inc., 380 F.3d 1340, 1342-43 (Fed. Cir. 2004); In re Nat’l Data Corp.,
753 F.2d 1056, 1058 (Fed. Cir. 1985) (stating “[t]hat a particular feature is descriptive
or generic with respect to the involved goods or services is one commonly accepted
rationale for giving less weight to a portion of a mark”).
As a reminder, the marks covered in Opposer’s Compared Registrations include
the BARBIE mark (in standard characters), BARBIE DREAMTOPIA (in standard
characters), BARBIE LIVE! IN THE DREAMHOUSE (in standard characters),
BARBIE DREAMHOUSE ADVENTURES (in standard characters), and
.
Because Opposer has not proven that the goods and services recited in any of the
Compared Registrations are related to the services recited in Applicant’s application,
we confine our analysis to the BARBIE mark (in standard characters), as Opposer
does, as it has the most similarity with Applicant’s mark.134 Opposer argues that,
134 49 TTABVUE 29-32.

Opposition No. 91281982
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when Opposer’s BARBIE mark is compared to the dominant portion of Applicant’s
mark, i.e., BARBEE, the parties’ marks are similar “in every relevant respect”135 and
points to testimony by Applicant’s founder, who admitted that the marks “sound
similar,”136 a point Applicant concedes in its brief.137
The marks have nothing else in common, Applicant continues, pointing out that
the parties’ marks are otherwise dissimilar: The mark displays the literal element
“BarBee” such that the capitalization indicates that the term is a compound word
made up of the individual words “Bar” and “Bee.”138 BarBee is a portmanteau of bar
and bee, combining two words relevant to the app’s purpose[,]” i.e., “[e]mployer bars
and restaurants can connect with and immediately hire ‘worker bees,’ and vice
versa.”139 The connotation of this compound word is a “Bee of the Bar,” which is
reinforced by the logo consisting of a bee inside a martini glass, giving it an entirely
different commercial impression when compared to Opposer’s mark.140 Applicant
acknowledges that the INC. element has been disclaimed, but argues that disclaimed
Had Opposer shown that the goods and services recited in one or more of the Compared
Registrations were related to the services recited in Applicant’s application, we would have
focused on a comparison of those marks.
135 49 TTABVUE 30.
136 49 TTABVUE 31; 41 TTABVUE 24 (Muirhead Cross Ex. Tr. 22:14-20).
137 50 TTABVUE 20.
138 50 TTABVUE 20.
139 50 TTABVUE 22.
140 50 TTABVUE 20-22.

Opposition No. 91281982
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matter cannot be ignored and that, when the mark is considered as a whole, it is
sufficiently dissimilar that confusion is not likely.141
We find, after considering the marks as a whole, the marks are not sufficiently
similar to weigh in favor of a likelihood of confusion. As an initial matter, consumers
who encounter Applicant’s mark would readily recognize its dominant element to
consist of the terms, “bar” and “bee.” Cf. Anheuser-Busch, LLC v. Innvopak Sys. Pty
Ltd., No. 91194148, 2015 TTAB LEXIS 260, at *27 (“[W]hen a compound term
comprises two ordinary English words, consumers often recognize them as such,
rather than considering the combination to be a fanciful term with no meaning at
all.”). The dominant, compound term used in Applicant’s mark is visually different
from Opposer’s BARBIE mark. 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,142 and, as a result, it
conveys the impression of a doll named BARBIE. As a result of their different
meanings when applied to the goods of Applicant and Opposer, the two marks create
different commercial impressions, notwithstanding the fact that they are identical in
sound. See, e.g., In re Sears, Roebuck & Co., No. 502919, 1987 TTAB LEXIS 84, at *8
141 50 TTABVUE 20.
142 27 TTABVUE 35 (Exhibit 1 to Test. Decl. Brutocao). In his declaration, Mr. Brutocao
expressly stated that the facts set out in the publications attached to his declaration were
accurate, id. at 3 (para. 5), allowing us to rely on them for the truth of the matter asserted.

Opposition No. 91281982
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(despite CROSS-OVER for bras and CROSSOVER for ladies’ sportswear being
identical in sound, the marks are not likely to cause confusion because they generate
different commercial impressions).
Opposer makes numerous arguments in an attempt to associate its BARBIE doll
with Applicant’s mark, including arguing that the BARBIE character has had more
than 250 occupations, including one as a beekeeper;143 that one of BARBIE’s artistic
collaborations resulted in BARBIE wearing a full-length bee costume;144 Opposer
sells BARBIE-branded martini glasses, which were featured in Barbie The Movie;145
and Opposer has sold a “Barbie Loves the Ocean Beach Shack Playset” that features
island-inspired beverages and a blender.146 None of these arguments are persuasive.
When comparing the marks, we consider, as we must, the marks as they appear in
the drawing and the goods and services as they are identified in the involved
application and Compared Registrations.
6. Nature and Extent of Any Actual Confusion and Conditions under
which There Has Been Contemporaneous Use
Under the seventh and eighth DuPont factors, we consider the nature and extent
of any actual confusion, in light of the length of time and conditions under which
there has been contemporaneous use of the parties’ subject marks. DuPont, 476 F.2d
at 1361. These factors are interrelated.
143 27 TTABVUE 21 (Test. Decl. Brutocao, paras. 73, 74(a)).
144 27 TTABVUE 22 (Test. Decl. Brutocao, para. 74(b)).
145 27 TTABVUE 23-24 (Test. Decl. Brutocao, para. 75(a)).
146 27 TTABVUE 24 (Test. Decl. Brutocao, para. 75(b)).

Opposition No. 91281982
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Applicant expressly states in its brief that it is not aware of any incidents of actual
confusion.147 Opposer, for its part, does not address this factor in its opening brief,
but in its reply brief it acknowledges that it is not aware of any such incidents.148
However, “the absence of evidence of actual confusion, under the seventh du Pont
factor, by itself is entitled to little weight in our likelihood of confusion analysis unless
there also is evidence, under the eighth du Pont factor, that there has been a
significant opportunity for actual confusion to have occurred.” In re Ass’n of the U.S.
Army, No. 76578579, 2007 TTAB LEXIS 52, at *27 (citing Gillette Canada Inc. v.
Ranir Corp., Opp. No. 82769, 1992 TTAB LEXIS 24, at *19-20).
Applicant argues that it has not, due to the ongoing nature of this proceeding, filed
an amendment alleging use of its mark in commerce. But the record reflects that
since it filed “its intent-to-use Application on October 19, 2021, Applicant has used
its Mark in connection with its identified goods since at least as early as 2022.”149
Because Opposer’s witness testified that Opposer has used its mark in connection
with at least dolls since at least 1959,150 Applicant maintains that the marks have
coexisted in the marketplace for approximately two years without any evidence of
confusion.151
147 50 TTABVUE 11.
148 49 TTABVUE; 51 TTABVUE 14.
149 50 TTABVUE 30; 33 TTABVUE 4 (Test. Decl. Muirhead, para. 7).
150 27 TTABVUE 3 (Test. Decl. Brutocao, para. 6).
151 50 TTABVUE 30-31.

Opposition No. 91281982
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The record, however, is not clear on the length of time that Applicant has used its
mark. For example, during cross-examination, Mr. Muirhead consistently testified
that Applicant was not currently using its involved mark but he did not testify as to
when usage stopped:
8 Q And you mentioned that you’re not on iOS or
9 Google. That’s interesting, because I actually
10 looked for those apps on those platforms today,
11 this morning, and wasn’t able to find them.
12 Is there a place where your service is
13 still available, or is it not available?
14 A There’s no place where it’s available.152
****
4 Q Okay. So you’re not using the mark in commerce
5 right now?
6 A No.153
Under the seventh and eighth DuPont factors, we find that there is no evidence of
actual confusion, but we also find that such absence of evidence is due to the lack of
meaningful exposure of Applicant’s mark to consumers. In the absence of a significant
opportunity for actual confusion to have occurred, the absence of actual confusion is
of little probative value in this case. See e.g., Barbara’s Bakery, 2007 TTAB LEXIS 9,
152 41 TTABVUE 17 (Muirhead Cross. Depo. Tr. 15:8-14).
153 41 TTABVUE 18 (Muirhead Cross. Depo. Tr. 16:4-6).

Opposition No. 91281982
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at *14 (where the respective marks coexisted in the marketplace for at least nine
years, absence of actual confusion nonetheless deemed “of little probative value”
because of the absence of a significant opportunity for such confusion to occur, given
“the minimal scope of applicant’s actual use of her mark in the marketplace”).
7. The Wide Variety of Goods and Services on which the BARBIE Mark
is Used
The ninth DuPont factor considers “[t]he variety of goods on which a mark is or is
not used (house mark, ‘family’ mark, product mark).” DuPont, 476 F.2d at 1361. “If a
party in the position of plaintiff uses its mark on a wide variety of goods, then
purchasers are more likely to view a defendant’s related good under a similar mark
as an extension of the plaintiff’s line.” Dollar Fin. Grp. v. Brittex Fin., Inc., 132 F.4th
1363, 1373 (Fed. Cir. 2025); DeVivo v. Ortiz, No. 91242863, 2020 TTAB LEXIS 15, at
*44. “This factor may favor a finding that confusion is likely if the goods or services
are not obviously related, but has less impact if the parties’ goods or services in issue
are identical or closely related.” Monster Energy, 2023 TTAB LEXIS 14, at *54.
“The goods and services demonstrating variety may be the subject of multiple
registrations of the same mark by the same party.” Monster Energy, 2023 TTAB
LEXIS 14, at *54; see also Nike, Inc. v. WNBA Ent., LLC, No. 91160755, 2007 TTAB
LEXIS 39, at *20 (“The fact that opposer applies its [registered] marks to a variety of
sports products makes it more likely that purchasers, aware of opposer’s use of the
mark on a variety of sports products, when seeing a similar mark used in connection
with backpacks, duffel bags and other sports bags, are likely to believe that these
products are also being produced or sponsored by opposer.”).

Opposition No. 91281982
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Mr. Brutocao, Opposer’s witness, testified that “[t]here are BARBIE® products in
over 50 categories, including food, fitness, clothing, digital applications, video games,
television shows, animated films, web media, electronics, outdoor toys, books,
household products (e.g. glassware, bags/luggage, cups, mugs, furniture, rugs,
candles), beauty products, jewelry, footwear, food products, and many more.”154
Although this testimony is vague as to the nature of the specific products, the
record does contain TSDR printouts of Opposer’s active, pleaded registrations, which
show that the BARBIE mark has been registered for use with a variety of goods and
services which, in addition to the registrations previously discussed, include,
wristwatches;155 toy furniture;156 plastic tea sets for use by children;157 vanity dresser
sets for use by children;158 Halloween costumes;159 soaps and lotions;160 clothing161
and shoes162; purses and cosmetic cases;163 cosmetics for children;164 facial tissues and
154 49 TTABVUE 36; 27 TTABVUE 4 (Test. Decl. Brutocao, para. 16).
155 22 TTABVUE 28-33.
156 22 TTABVUE 34-39.
157 22 TTABVUE 40-45.
158 22 TTABVUE 46-51.
159 22 TTABVUE 52-56.
160 22 TTABVUE 57-61.
161 22 TTABVUE 67-72, 111-13.
162 22 TTABVUE 90-92.
163 22 TTABVUE 73-75.
164 22 TTABVUE 76-78, 105-110.

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stickers for fingernails;165 jewelry;166 greeting cards;167 and doll clothes and
accessories.168 And, although unpleaded, Opposer made of record other active
registrations for BARBIE and BARBIE-formative marks for a variety of goods and
services: series of books;169 vacuum bottles for drinks;170 bandages;171 sunglasses;172
retail store featuring consumer products;173 and sanitary masks made of cloth for
protection against viral infection.174 The record shows that Barbie, the character, has
appeared in over thirty entertainment titles.175 Barbie has appeared in a supporting
role in multiple Toy Story films, and she starred in her own Netflix series Barbie: Life
in the Dreamhouse, and in her own branded video games, one of which was inducted
into the World Video Game Hall of Fame in 2023.176
Applicant does not counter Opposer’s argument or even specifically address these
arguments in its brief, nor did Applicant cross-examine Opposer’s witness.
165 22 TTABVUE 79-81.
166 22 TTABVUE 82-84.
167 22 TTABVUE 85-86.
168 22 TTABVUE 93-95, 111-13, 114-16.
169 23 TTABVUE 5-10.
170 23 TTABVUE 11-16.
171 23 TTABVUE 26-28.
172 23 TTABVUE 29-31.
173 23 TTABVUE 32-34.
174 23 TTABVUE 92-94.
175 49 TTABVUE 36; 27 TTABVUE 6 (Test. Decl. Brutocao, para. 22).
176 49 TTABVUE 36; 27 TTABVUE 6-8, 199-220 (Test. Decl. Brutocao, paras. 22-25 and Exs.
16-21).

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8. Weighing of the DuPont Factors
Finally, we must weigh and balance the DuPont factors for which there has been
evidence and argument in this appeal. In re Charger Ventures LLC, 64 F.4th 1375,
1381 (Fed. Cir. 2023) (“[I]t is important ... that the Board ... weigh the DuPont factors
used in its analysis and explain the results of that weighing.”).
Under the fifth and sixth DuPont factors, Opposer was successful in
demonstrating that the BARBIE marks are very strong for dolls, doll clothes and doll
houses and the BARBIE and BARBIE-formative marks are strong for the goods and
services identified in the Compared Registrations largely due to association with the
dolls. Applicant, for its part, was not successful in diminishing the strength of
Opposer’s marks. The sixth factor thus weighs in favor of a likelihood of confusion,
while the fifth is neutral.
Turning to the second and third DuPont factors, Opposer did not establish that
the parties’ goods and services are legally identical or highly related or that the
channels of trade overlap, causing these two factors to weigh strongly against
likelihood of confusion. The fourth DuPont factor, which considers the “conditions
under which and buyers to whom sales are made, i.e. ‘impulse’ v. careful,
sophisticated purchasing,” weighs in favor of a likelihood of confusion, as does the
ninth DuPont factor, which considers “[t]he variety of goods on which a mark is or is
not used.”
Considering the first DuPont factor, we acknowledge that the dominant portions
of the marks are phonetically identical, but, when considering the marks as a whole,

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the marks are highly dissimilar in sight, connotation and commercial impression,
weighing strongly against likelihood of confusion.
Here, not only are the marks dissimilar but, when combined with our
determination that Opposer did not establish that the parties’ goods and services are
legally identical or highly related or that the channels of trade overlap, we conclude
confusion is not likely. This is true despite the strength of Opposer’s BARBIE marks.
See e.g., DC Comics v. Cellular Nerd LLC, No. 91246950, 2022 TTAB LEXIS 453, at
*65-66 (“Despite the strength of Opposer’s “S” shield design marks, we find that the
differences in the respective goods and services, as well as differences in the marks,
are significant countervailing factors.”); Burns Philp Food, Inc. v. Modern Prods.,
Inc., No. 77433, 1992 TTAB LEXIS 35, at *10 (“[E]ven though the parties’ goods are
relatively inexpensive and would presumably be purchased without much care, and
even though opposer’s mark is famous in the field of spices, it is our firm belief that
applicant’s mark, considered in its entirety, is sufficiently different from opposer’s in
sound, appearance and meaning that confusion is unlikely.”), aff’d mem., 1 F.3d 1252
(Fed. Cir. 1993).
For the reasons discussed above, Opposer has failed to prove its claim of priority
and likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), by a preponderance of the evidence.
V. Dilution
To prevail on its dilution claim under Section 43(c) of the Trademark Act, Opposer
must establish by a preponderance of the evidence that:

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(1) it owns a famous mark that is distinctive; (2) the
[Applicant] is using a mark in commerce that allegedly
dilutes [Opposer’s] famous mark; (3) [Applicant’s] ... use of
its mark[s] began after the plaintiff’s mark became famous;
and (4) [Applicant’s] ... use of its mark is likely to cause
dilution by blurring or by tarnishment.
15 U.S.C. § 1125(c); Coach Servs., 668 F.3d at 1371-72; DC Comics, 2022 TTAB LEXIS
453, at *67.
Dilution by blurring is defined as the “association arising from the similarity
between a mark or trade name and a famous mark that impairs the distinctiveness
of the famous mark.” 15 U.S.C. § 1125(c)(2)(B). Dilution by tarnishment is defined as
an “association arising from the similarity between a mark or trade name and a
famous mark that harms the reputation of the famous mark.” 15 U.S.C.
§ 1125(c)(2)(C). Dilution occurs “regardless of the presence or absence of actual or
likely confusion, of competition, or of actual economic injury.” 15 U.S.C. § 1125(c)(1).
As an initial matter, we note that in the Notice of Opposition, Opposer refers to
its “World-Famous BARBIE® marks,”177 which we understand to be a reference to its
forty pleaded registered BARBIE and BARBIE-formative marks set out in the chart
in its pleading.178 Similarly, Opposer’s brief refers to various BARBIE and BARBIE-
formative marks, including the BARBIE and BARBIE-formative marks of the
Compared Registrations, the BARBIE DREAMHOUSE mark, and THE BARBIE
MOVIE. We have narrowed our consideration of Opposer’s dilution claims to the
mark that we believe stands the best chance of serving as a basis for them.
177 1 TTABVUE 19 (para. 4).
178 1 TTABVUE 20-23 (para. 10).

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Specifically, we focus our attention on Opposer’s use and registration of the BARBIE
mark for dolls179 because we find, as discussed herein, that the BARBIE mark is
famous for these goods. TiVo Brands LLC v. Tivoli, LLC, No. 91221632, 2018 TTAB
LEXIS 439, at *20-21 (“We have narrowed our consideration of the dilution claim to
the mark that we believe stands the best chance of serving as a basis for
its dilution claim.”). If we determine that if Applicant’s mark would not dilute
Opposer’s BARBIE mark for dolls, then neither would Applicant’s mark dilute
Opposer’s other pleaded marks. Id.
A. Does Opposer Own a Distinctive, Famous Mark for Purposes of
Analyzing Opposer’s Dilution Claim?
There is no dispute that Opposer’s BARBIE mark is inherently distinctive and
commercially very strong for “dolls” as a result of widespread use and consumer
recognition. Indeed, in its brief, Applicant acknowledges that this factor “may not
favor Applicant.”180
As for whether the BARBIE mark is sufficiently “famous” to be entitled to
protection against dilution, we must determine whether it is “widely recognized by
the general consuming public of the United States as a designation of source of the
goods or services of the mark’s owner.” N.Y. Yankees P’ship, 2015 TTAB LEXIS 96,
at *10 (quoting Section 43(c)(2)(A) of the Trademark Act, 15 U.S.C. § 1125(c)(2)(A)).
179 Registration No. 689055 (22 TTABVUE 5-10).
180 50 TTABVUE 32, 35.

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In assessing fame for dilution purposes, we consider the following four non-
exclusive factors:
(i) The duration, extent, and geographic reach of
advertising and publicity of the mark, whether advertised
or publicized by the owner or third parties.
(ii) The amount, volume, and geographic extent of sales of
goods or services offered under the mark.
(iii) The extent of actual recognition of the mark.
(iv) Whether the mark was registered under the Act of
March 3, 1881, or the Act of February 20, 1905, or on the
principal register.
15 U.S.C. § 1125(c)(2)(A)(i)-(iv).
As mentioned earlier, fame for likelihood of confusion and fame for dilution are
distinct concepts, and dilution fame requires a more stringent showing. Coach Servs.,
668 F.3d at 1373. While fame for dilution “is an either/or proposition”―it either exists
or does not―fame for likelihood of confusion is a matter of degree along a continuum.
Palm Bay, 396 F.3d at 1375 (quoting Coors Brewing, 343 F.3d at 1344). Accordingly,
a mark can acquire “sufficient public recognition and renown to be famous for
purposes of likelihood of confusion without meeting the more stringent requirement
for dilution fame.” Coach Servs., 668 F.3d at 1373 (quoting 7-Eleven, 2007 TTAB
LEXIS 58, at *22).
Opposer must show that, when the general public encounters the mark “in almost
any context, it associates the term, at least initially, with the mark’s owner.” Coach
Servs., 668 F.3d at 1373 (quoting Toro Co. v. ToroHead, Inc., No. 91114061, 2001

Opposition No. 91281982
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TTAB LEXIS 823, at *55).181 A famous mark is one that has become a “household
name.” Coach Servs, 668 F.3d at 1373 (internal citations omitted). In addition, “a
mark must be not only famous, but also so distinctive that the public would associate
the term with the owner of the famous mark even when it encounters the term apart
from the owner’s goods or services, i.e., devoid of its trademark context.” Toro Co.,
2001 TTAB LEXIS 823, at *40 (citing H.R. Rep. No. 104-374, at 3 (1995) (“the mark
signifies something unique, singular, or particular”)). We discussed the evidence of
fame of Opposer’s BARBIE mark for dolls above. By all measures, BARBIE is a
famous trademark for dolls and is entitled to protection against dilution under 15
U.S.C. § 1125(c).
Applicant argues that Opposer’s marks cannot be diluted because they are only
famous within a “niche class of consumers” and argues that “Opposer has failed to
offer evidence showing fame outside that of young girls and the toy industry.”182 We
disagree. As an initial matter, Applicant does not cite to any portion of the record for
support for this argument and attorney argument without evidence is not persuasive.
Cai, 901 F.3d at 1371. Moreover, it is undisputed that Opposer’s dolls appeal to young
girls.183 However, Opposer’s dolls do not have to be purchased by the general public
for the BARBIE mark to be recognized by the general public. The duration, extent,
and geographic reach of the advertising and publicity of Opposer’s BARBIE mark is
181 “Although the Board’s Toro decision predates the TDRA, its discussion of fame for dilution
purposes remains relevant.” Coach Servs, 668 F.3d at 1373 n.8.
182 50 TTABVUE 35-36.
183 27 TTABVUE 4 (Test. Decl. Brutocao, para. 12).

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exceptional, as discussed above, and has resulted in the BARBIE mark remaining in
the eye of the general public for decades. See e.g., In re Mr. Recipe, LLC, No.
86040643, 2016 TTAB LEXIS 80, at *11-12 (“‘Niche fame’ is the renown of a mark in
a specialized market (e.g., a specific geographic area or field of endeavor) … [and]
relevant to counter a showing of fame in the dilution context ….”).
B. Did Applicant Use its BARBEE and Design Mark in Commerce?
Turning to the next dilution element, Opposer must establish that Applicant was
using its allegedly diluting mark in commerce. To this end, an application based on
intent to use a mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C.
§ 1051(b), satisfies the “in commerce” requirement. N.Y. Yankees P’ship, 2015 TTAB
LEXIS 96, at *24 (“[W]e held that an application based on intent to use a mark in
commerce under Trademark Act Section 1(b) satisfied the commerce requirement.”).
C. Was Opposer’s BARBIE Mark Famous Before Applicant’s
Constructive Filing Date?
Under the third dilution factor, Opposer must prove that its mark became famous
before the filing date of Applicant’s intent-to-use application, which is October 19,
2021. See Coach Servs., 668 F.3d at 1373. The vast majority of the evidence in the
record about the fame of Opposer’s BARBIE trademark predates 2021, the year of
Applicant’s filing. Based on the record evidence previously discussed,184 we find that
Opposer’s BARBIE mark for dolls became famous before the filing date of the involved
application.
184 See discussion in Sections IV(B)(1)(b)-(c), supra.

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D. Is Applicant’s Mark Likely to Cause Dilution by Blurring?
The Trademark Act provides the following framework for considering whether a
mark dilutes a famous mark by blurring:
In determining whether a mark or trade name is likely to
cause dilution by blurring, the [board] may consider all
relevant factors, including the following:
(i) The degree of similarity between the mark or
trade name and the famous mark.
(ii) The degree of inherent or acquired
distinctiveness of the famous mark.
(iii) The extent to which the owner of the famous
mark is engaging in substantially exclusive use of
the mark.
(iv) The degree of recognition of the famous mark.
(v) Whether the user of the mark or trade name
intended to create an association with the famous
mark.
(vi) Any actual association between the mark or
trade name and the famous mark.
15 U.S.C. § 1125(c)(2)(B)(i)-(vi).
1. The Degree of Similarity Between Opposer’s and Applicant’s Marks
Opposer must demonstrate that its mark and Applicant’s mark are similar.
Section 43(c)(2)(B)(i) of the Trademark Act, 15 U.S.C. § 1125(c)(2)(B)(i). Applicant
argues that this element is of “determinative importance” inasmuch as its mark is
not similar enough to Opposer’s mark to cause any dilution.
In determining the similarity or dissimilarity of the marks for dilution purposes,
[the Board] use[s] the same test as for determining the
similarity or dissimilarity of the marks in the likelihood of
confusion analysis, that is, the similarity or dissimilarity

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of the marks in their entireties as to appearance, sound,
connotation and commercial impression. While we are not
concerned in this context with whether a likelihood of
confusion exists, we still consider the marks, not on the
basis of a side-by-side comparison, but rather in terms of
whether the marks are sufficiently similar in their overall
commercial impressions that the required association
exists.
TiVo Brands, 2018 TTAB LEXIS 439, at *51 (quoting Nike, Inc. v. Maher, No.
91188789, 2011 TTAB LEXIS 234, at *41-42). See also DC Comics, 2022 TTAB LEXIS
453, at *79 (“While we are not conducting a Section 2(d) likelihood of confusion
analysis under this factor for dilution by blurring, we still consider the degree of
similarity or dissimilarity of the marks in their entireties as to appearance,
connotation, and commercial impression.”). “In other words, are applicant’s and
opposer’s marks ‘sufficiently similar to trigger consumers to conjure up a famous
mark when confronted with the second mark[?]’” Rolex Watch U.S.A., Inc. v. AFP
Imaging Corp., No. 91188993, 2011 TTAB LEXIS 378, at *22 (quoting Nat’l Pork
Board v. Supreme Lobster and Seafood Co., No. 91166701, 2010 TTAB LEXIS 225, at
*62), vacated on other grounds, 2011 TTAB LEXIS 2013.
Where, as here, Applicant’s mark has a different appearance, meaning and
commercial impression from Opposer’s mark, this factor favors Applicant. Rolex
Watch U.S.A., 2011 TTAB LEXIS 378, at *22-24 (Opposer’s ROLEX for watches and
applicant’s ROLL-X for X-ray tables that roll were not similar enough where survey
showed that ROLL-X called to mind a feature of the goods (such as rolling, portable
or X-ray) to more persons than thought of opposer’s ROLEX for watches. No likelihood
of blurring was proven.), vacated on other grounds, 2011 TTAB LEXIS 2013. See also

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DC Comics, 2022 TTAB LEXIS 453, at *80 (“Accordingly, just as we found that
Applicant’s mark is not similar to Opposer’s ‘S’ shield design marks for purposes of
likelihood of confusion, we find that Applicant’s mark is not similar enough to
Opposer’s asserted marks for purposes of dilution.”); Citigroup Inc. v. Cap. City Bank
Grp., Inc., No. 91177415, 2010 TTAB LEXIS 40, at *78-79 (because CAPITAL CITY
BANK was not similar enough to CITIBANK to be likely to cause confusion, it was
also not similar enough to be likely to cause dilutive impairment), aff’d on other
grounds, 637 F.3d 1344.
Based on our review of the parties’ marks as we discussed above in connection
with Opposer’s priority and likelihood of confusion claim, we find that 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. The similarities/dissimilarities of the marks factor
therefore favors Applicant.
2. The Degree of Inherent or Acquired Distinctiveness of the Famous
Mark.
Opposer must also establish that its mark is distinctive. “This inquiry is made
even when it is undisputed that Opposer’s mark is registered on the Principal
Register.” NASDAQ Stock Mkt. Inc. v. Antartica S.r.l., No. 91121204, 2003 TTAB
LEXIS 391, at *61-62. As discussed, supra, we have found Opposer’s mark to be

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inherently distinctive, Applicant does not dispute this, and Applicant acknowledges
in its brief that this element “may not favor Applicant.”185
3. The Extent to Which the Owner of the Famous Mark is Engaging in
Substantially Exclusive Use of the Mark.
Mr. Brutocao, Opposer’s witness, testified that “[Opposer] has enforced the
BARBIE® mark in several lawsuits, hundreds of Opposition and Cancelation actions
before the Trademark Trial and Appeal Board, hundreds of cease-and-desist letters,
and tens of thousands of online notice-and-takedown requests.”186 Indeed, Applicant
admitted that it is unaware of any third parties using the mark BARBIE or any
similar mark such as BARBEE.187 Even considering the two registrations in Class 16
of which Opposer is purportedly aware, which we discussed earlier,188 there is no
evidence of the registrations in the record.
Even if there were such evidence, it would not cause this factor to weigh in favor
of Applicant because the law does not require that use of the famous mark be
“absolutely exclusive,” but merely “substantially exclusive.” McDonald’s Corp. v.
McSweet, LLC, No. 91178758, 2014 TTAB LEXIS 351, at *64-65 (citing L.D. Kichler
Co. v. Davoil, Inc., 192 F.3d 1349, 1352 (Fed. Cir. 1999) (holding that in the
trademark context, “substantially exclusive” use does not mean totally exclusive
use)).
185 49 TTABVUE 32.
186 27 TTABVUE 20-21 (Brutocao, paras. 71-72).
187 26 TTABVUE 14 (Applicant’s Response to Opposer’s Request for Admission Nos. 26-27);
26 TTABVUE 24, 29-30 (Applicant’s Response to Interrogatory Nos. 7-8, 16-18).
188 See discussion, supra, Section IV(B)(1)(a).

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On the record before us, we find that Opposer’s use of the BARBIE mark is at least
substantially exclusive. Accordingly, this factor favors Opposer.
4. The Degree of Recognition of the Famous Mark
With respect to the degree of recognition of Opposer’s BARBIE mark, we have no
direct evidence, e.g., a survey, showing a level of recognition of Opposer’s mark.
However, Opposer’s evidence of strong and consistent appearance in print and online,
and in television and feature films proves that Opposer’s mark has attained a
significant level of recognition. DC Comics, 2022 TTAB LEXIS 453, at *82-83.
5. Whether Applicant Intended to Create an Association with Opposer’s
Famous BARBIE Mark.
We turn now to the factor analyzing whether Applicant intended to create an
association with Opposer’s BARBIE mark. Opposer argues that Applicant intended
to create an association with Opposer. To satisfy this factor, it is not enough that
Applicant was aware of Opposer’s BARBIE mark before it filed its application to
register its involved mark.189 Nike, 2011 TTAB LEXIS 234, at *43.
Here, Opposer relies heavily on Applicant’s Twitter post dated March 8, 2022,
which includes the caption: “I’m a BarBee Boy!”190 In its main brief, Opposer argues
that this post and its caption “speak[ ] for itself.”191
189 49 TTABVUE 40.
190 49 TTABVUE 40; 51 TTABVUE 7.
191 49 TTABVUE 40.

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192
Applicant counters that this is “one comedic social media post … [that] clearly
falls under fair use and not an actual intention to create an actual source-confusing
association between the respective brands.”193 In its reply brief, Opposer offers a more
robust argument: that Applicant was “clearly invoking the well-known Aqua song,
‘Barbie Girl”—specifically its signature chorus lyric, ‘I’m a Barbie Girl.’”194 Opposer
adds that Applicant’s characterization of the post as “comedic” and “fair use” is a
192 41 TTABVUE 95 (Exhibit D to the Muirhead Cross Ex. Test.).
193 50 TTABVUE 33.
194 51 TTABVUE 7.

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concession that the caption “I’m a BarBee boy!” was intended to call to mind and
capitalize on consumers’ familiarity with the phrase “I’m a Barbie Girl.”195
Applicant’s argument mentions “fair use” in passing but does not explain how its
post meets the requirements of Section 43(c)(3)(A), which expressly provides that a
“fair use” “shall not be actionable as dilution by blurring or dilution by
tarnishment ….” 15 U.S.C. § 43(c)(3)(A). Similarly, Opposer does not address the
statutory elements but rather encourages us to draw inferences from Applicant’s
arguments.
During cross-examination, Mr. Muirhead, Applicant’s founder, was questioned
about this post:
19 Q This is a Twitter post on BuzzBarBee from
20 March 8th, 2022. Is that you in that photo?
21 A That is. But that was taken during COVID in 2020.
22 Q That’s fine. And the text is, “I’m a BarBee boy.”
23 You wrote that?
24 A Is this the Twitter? No, I didn’t write that.
25 Q You did not write that?
1 A No. I did not write that.
2 Q Who did?
3 A The guy that we hired.
4 Q And he posted this on your behalf?
195 51 TTABVUE 7-8.

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5 A Apparently so. I didn’t even know this existed
6 until now. And to be honest, I’m not even certain,
7 like, with the mask on.
8 Q You don’t recognize yourself standing behind that
9 counter in that room?
10 A You know, I know the picture.
11 Q So that is you?
12 A It appears to be.
13 Q Okay. And you -- have you looked at this Twitter
14 account since March 8, 2022?
15 A I don’t know. No. I don’t have access to -- I
16 have no security passwords to it.
17 Q Again, like you said, nothing’s ever lost. It’s
18 there to look at.· I’m not asking if you accessed
19 it since then.
20 A I have no reason to look for it. If I don’t know
21 if I’m on there, I have no reason to look for it to
22 see if we’re on there because it’s not a platform
23 that we use because I strictly use TikTok.196
196 41 TTABVUE 42-43 (Cross. Ex. Muirhead 40:19-41:23).

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Based on this evidence of record, we find that this one post alone, without more,
is not sufficient for us to determine that Applicant intended to create as association
with Opposer’s BARBIE mark.
6. Any Actual Association between the Mark or Trade Name and the
Famous Mark.
While the parties agree that there is no evidence of any actual association between
Applicant’s mark and Opposer’s mark,197 Opposer argues that such evidence is not
required,198 and indeed would be difficult to come by, inasmuch as Applicant has used
its mark at most in a very limited manner.199 Applicant, on the other hand, counters
that the lack of evidence clearly points in its favor.200
Because the involved application was filed based on an intent-to-use, and the
record shows that Applicant has had limited actual use of its mark,201 we find that
there has been a limited opportunity for the public to make any actual association
between the parties’ marks. Thus, we consider this factor to be neutral. N.Y. Yankees
P’ship, 2015 TTAB LEXIS 96, at *35 (because involved application filed based on
intent to use and record shows limited actual use, the Board found this factor
neutral).
197 49 TTABVUE 40; 50 TTABVUE
198 49 TTABVUE 40.
199 49 TTABVUE 40; 51 TTABVUE 6.
200 50 TTABVUE 32.
201 See discussion, supra, Section IV(B)(6).

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7. Conclusion as to Dilution by Blurring
Having determined that Opposer failed to establish that Applicant intended to
create as association with Opposer’s BARBIE mark and that the marks are
dissimilar, we conclude on this record that Opposer has failed to prove dilution by
blurring under Section 43(c)(2)(B) of the Trademark Act, 15 U.S.C. § 1125(c)(2)(B), by
a preponderance of the evidence.
E. Whether Applicant’s Mark Is Likely to Cause Dilution by
Tarnishment
Dilution by tarnishment is an “association arising from the similarity between a
mark or trade name and a famous mark that harms the reputation of the famous
mark.” 15 U.S.C. § 1125(c)(2)(C). In addition to the first three elements of a dilution
claim discussed above, Opposer also must prove by a preponderance of the evidence
that Applicant’s use of its mark is likely to cause dilution by tarnishment.
Opposer argues that Applicant uses its mark with unwholesome and unsavory
content, such as the below “bawdy images” taken from Applicant’s TikTok account:

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202
Opposer adds that during Mr. Muirhead’s cross-examination, he testified that he
posted to TikTok an image of a shirtless man with the caption, “thirsty?” to “play on
the sex appeal of the viewers.”203
Applicant, not surprisingly, completely disagrees. First, Applicant argues that the
similarities between the marks are not sufficient to create an association, so no
tarnishment can result.204 Second, “though Applicant’s Mark is not used for choir boy
services, a few pictures of shirtless men and an association with bars and alcohol is
202 49 TTABVUE 42; 45 TTABVUE 2 (Exs. F2, F3, F4 and F6).
203 49 TTABVUE 43; 41 TTABVUE 56 (Muirhead Cross Ex. Test. 54:15-19).
204 50 TTABVUE 34.

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not the type of ‘sexual activity’, obscenity, and illegal activity[ ] that is likely to
tarnish Opposer’s brand.”205 Applicant adds that “Opposer’s allegations of
bawdiness are highly hypocritical.”206 “To insinuate that Margot Robbie or Ryan
Gosling were cast in the movie without any thought of sex appeal in such decisions is
unconvincing.”207 In making these arguments, Applicant acknowledges that “the
content of the Barbie movie has not been made of record ….”208
We need not reach the question of whether Applicant’s use of its mark is
distasteful. 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.
VI. Decision
The opposition to registration of the mark in Application Serial No. 97081593 is
dismissed on the grounds of (1) priority and likelihood of confusion under Section 2(d)
of the Trademark Act, 15 U.S.C. § 1052(d), and (2) dilution by blurring and
tarnishment under Section 43(c) of the Trademark Act, 15 U.S.C. § 1125(c).
205 50 TTABVUE 34.
206 50 TTABVUE 34 (italics in original, bold here).
207 50 TTABVUE 35.
208 50 TTABVUE 35.