Do “Old Barbee” Alcoholic Beverages Really “Dilute” Barbie?

Intellectual Property Blog Nov 26, 2018 Scottsdale, AZ

On November 19, 2018, Mattel, Inc. filed an opposition in the United States Patent and Trademark Office against the Paris Distilling Company, LLC’s trademark application for its OLD BARBEE mark to be used in connection with alcoholic beverage products.

Mattel argues that BARBIE® is a strong, distinctive and famous mark, which would be “diluted” if OLD BARBEE were granted registration. According to Mattel, OLD BARBEE is identical to or a “spurious imitation” of BARBIE®, and Paris Distilling allegedly intentionally selected OLD BARBEE to create an association in the minds of those in the marketplace between BARBIE® and Paris Distilling’s alcoholic beverages. Mattel claims that OLD BARBEE so closely resembles BARBIE® that it is likely to dilute the iconic BARBIE® trademarks.

The USPTO will have to determine whether OLD BARBEE is confusingly similar to BARBIE® and whether OLD BARBEE tarnishes, or dilutes, the world-famous BARBIE® mark “by association with unwholesome goods or services.” One question is whether this case is similar to Mattel, Inc. v. JCom, Inc. and Brad McBride, 1998 WL 766711 (S.D.N.Y. Sep. 10, 1998), in which the New York district court enjoyed use of BARBIE PLAYHOUSE (in the same font and color as Mattel) to promote the sale of adult entertainment services because it diluted the BARBIE® mark.

It seems highly unlikely that a consumer purchasing, say, OLD BARBEE Bourbon whiskey, from Paris Distilling in Paris, Kentucky would be confused into believing there was some association between Paris Distilling and Mattel. That is, unless the alcohol bottle’s packaging was confusingly similar to packaging used by Mattel (e.g. written in pink script).

Stay tuned!

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