THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB

Oral Hearing: April 26, 2012 Mailed: September 26, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

Trademark Trial and Appeal Board
___________

Mattel, Inc.
v.
S.W. Fantasies, Inc.
___________

Opposition No. 91170977
___________

Edward T. Colbert and William M. Merone of Kenyon & Kenyon
LLP

Erik M. Pelton of Erik M. Pelton & Associates, PLLC
____________

Before Holtzman, Taylor, and Shaw, Administrative Trademark
Judges.

Opinion by Shaw, Administrative Trademark Judge:

S.W. Fantasies, Inc. (“applicant”) has filed an

application to register on the Principal Register the mark

BARBIE GRIFFIN, in standard character format, for

“Entertainment services, namely, providing a web site

featuring photographs, video presentations, and information

about a model; adult entertainment services, namely,

providing a web site featuring photographs, video
Opposition No. 91170977

presentations and information about a model; entertainment

services, namely, live appearances by a model” in

International Class 41.1

Registration has been opposed by Mattel, Inc.

(“opposer”) on the grounds of (1) priority and likelihood

of confusion, and (2) dilution.

Opposer, in its notice of opposition, specifically

alleges that since as early as 1958, it has continuously

used in interstate commerce BARBIE and marks containing

BARBIE as trademarks for toys and other goods and services;

that it is the owner of a family of BARBIE marks; and that

it has promoted and sold its toys and other goods and

services under the BARBIE marks, for the most part, prior

to any alleged use by applicant of its applied-for mark.

Opposer further alleges that as a result of its use,

promotion and adverting of its BARBIE marks, BARBIE has

become well known to the trade and to the public, and has

accordingly acquired significant good will; and, therefore,

applicant’s use of its BARBIE GRIFFIN mark will “dilute” or

“lessen the distinctiveness of opposer’s BARBIE marks.”

Opposer also alleges that applicant’s BARBIE GRIFFIN mark

so resembles its previously used, and not abandoned, BARBIE

1
Serial. No. 78584251, filed March 10, 2005, claiming first use
of the mark in commerce and anywhere as early as April 2003.

2
Opposition No. 91170977

marks as to be likely, when applied to applicant’s listed

services, to cause confusion, mistake or deception. Opposer

alleges that it owns the “famous trademark BARBIE in many

different formats,” however, opposer does not allege that

the BARBIE marks became “famous” within the meaning of 15

U.S.C. § 1125(c) prior to applicant’s adoption of its

BARBIE GRIFFIN mark.

Opposer alleged ownership and prior use of seventy

trademark and service mark registrations comprising the

term BARBIE, in part or in whole. For purposes of this

opposition, we focus on the following three registrations

for BARBIE marks because these marks are the closest to

applicant’s mark and cover services that, when considered

vis-à-vis the applied-for mark and identified services, are

most likely to support a finding of likelihood of

confusion. See, e.g., In re Max Capital Group Ltd., 93

U.S.P.Q.2d 1243, 1245 (TTAB 2010). To the extent that there

would be confusion with these registrations, it would serve

little purpose to consider the other registrations. And if

there is no likelihood of confusion with these

registrations, there would similarly be no likelihood of

confusion with the other registrations.

• Registration No. 2151953 for the mark BARBIE, in
typed form, for, inter alia, “providing information
over a global computer network featuring games,

3
Opposition No. 91170977

stories, directories for toys and games, toy
collectibles, and chat sessions,” in International
Class 42;2
• Registration No. 2495195 for the mark BARBIE, in
typed form, for, inter alia, “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,” in International Class 41;3 and
• Registration No. 2588845 for the mark BARBIE, in
typed form, for, “entertainment services, namely,
live appearances by a costumed character,” in
International Class 41.4

Applicant, in its answer, denied the essential

allegations of the notice of opposition.

The Record

By rule, the record includes applicant’s application

file and the pleadings. Trademark Rule 2.122(b), 37 CFR

§ 2.122(b). In addition, the parties introduced the

following testimony and evidence by stipulation.

A. Opposer’s evidence.

1. Declaration of Elizabeth Grampp, the Director of BARBIE
Collector Marketing at Mattel, with attached exhibits.
2. First and second declarations of William Lehner, an
Administrative Assistant with the law firm of Kenyon
& Kenyon, with attached exhibits.
3. Opposer’s First Notice of Reliance comprising:
a. Copies of selected registrations for various BARBIE
marks (Exhibits A1-A77), pursuant to Trademark Rule
2
Issued April 21, 1998; Sections 8 and 15 affidavits accepted
and acknowledged; renewed.
3
Issued October 9, 2001; Sections 8 and 15 affidavits accepted
and acknowledged; renewed.
4
Issued July 7, 2002; Section 8 affidavit accepted.

4
Opposition No. 91170977

2.122(d)(2), printed from the electronic database of
the U.S. Patent and Trademark Office showing the
current status of and title to the registrations;
b. Certain printed third-party publications (Exhibits 1-
79), pursuant to Rule 122(e), purporting “to show the
fame of Mattel’s BARBIE mark among the general
public;” and
c. Copies of reported judicial decisions (exhibits 80-
87), pursuant to Rule 122(e), purporting to
“reference the fame of the BARBIE mark or . . .
represent[ing] judicial findings by the federal
courts that the BARBIE mark is famous.”

B. Applicant’s evidence.

Applicant filed a First Notice of Reliance comprising:
a. Third party registrations, pursuant to Trademark Rule
2.122(e);
b. Excerpts from the official records of the U.S. Census
Bureau purporting to show “the frequency of certain
names in the United States,” pursuant to Trademark
Rule 2.122(e) (Applicant’s NOR at 2);
c. Definitions of certain words according to
dictionary.com and Merriam Webster’s Dictionary,
pursuant to Trademark Rule 2.122(e);
d. Excerpts from two baby name books, pursuant to
Trademark Rule 2.122(e);
e. An image from Opposer’s website, pursuant to
Trademark Rule 2.122(e); and
f. Certain interrogatory responses and admissions
produced by opposer, pursuant to Trademark Rule
2.122(j).

Preliminary Issues

Motions to Strike

On June 9, 2010, the Board deferred until final

decision consideration of applicant’s first motion to

strike testimony evidence comprising publications,

5
Opposition No. 91170977

published judicial decisions, and 24 of 77 trademark

registrations. On June 6, 2011, the Board also deferred

until final decision consideration of applicant’s second

motion to strike testimony evidence comprising several

declarations and/or attached exhibits. We now consider

these.

Applicant’s First Motion to Strike

Applicant’s First Motion to Strike objects to third-

party printed publications purportedly attesting to the

fame of the BARBIE marks as well as to judicial decisions

purporting to show the fame of the BARBIE marks and

submitted by opposer pursuant to a notice of reliance under

Rule 122(e). Applicant also objects to twenty-four

trademark registrations for BARBIE marks owned by opposer

which were submitted pursuant to a notice of reliance under

Rule 122(d)(2). Applicant argues that the publications,

judicial decisions, and trademarks registrations should be

stricken because none of them were “produced or identified

[by opposer] in response to Applicant’s discovery requests

seeking evidence of fame.” Applicant’s First Motion to

Strike at 11.

In response, opposer argues that it “was under no

obligation to respond to these improper requests and

produce its trial evidence, especially as [it] had not

6
Opposition No. 91170977

decided prior to trial on what it would rely to establish

‘fame.’” Opposer’s Response to First Motion to Strike at

5. Moreover, opposer consistently objected in its discovery

responses to applicant’s requests stating that, inter alia,

(1) the requests were overbroad and unduly burdensome; (2)

the requests called for legal conclusions; (3) the

documents sought were irrelevant; (4) the documents sought

were privileged, subject to the work product doctrine or

confidential in nature prior to entry of a suitable

protective agreement; (5) the documents sought were in the

public record and equally available to applicant;

(6) responsive documents would be produced at a mutually

agreeable time and place; and/or (7) that requests for

information regarding witnesses and experts or documents

upon which opposer intended to rely on during this

proceeding were premature or were beyond the scope of

material required by Trademark Office rules. Opposer’s

Responses to Applicant’s First Set of Interrogatories and

Opposer’s Responses to Applicant’s First Request for

Production of Documents and Things. Opposer also points out

that applicant never filed a motion to compel in response

to opposer’s numerous and repeated objections to the

discovery requests.

7
Opposition No. 91170977

Finally, regarding the twenty-four additional

registrations identified in the Notice of Reliance, opposer

states that it is “not relying on those twenty-four

additional registrations to establish a cause of action for

confusion or dilution under Section 2 . . . . Instead, [it]

is offering these additional registrations as evidence of

the fame of the marks that were pled, as they constitute

further proof of how, for how long, and with what goods and

services Mattel has used its BARBIE and BARBIE-formative

marks over the years.” Opposer’s Opposition to Applicant’s

Motion to Strike Opposer’s Testimony Evidence at 9

(emphasis in original).5

We overrule the objections to this evidence and deny

the motion to strike the evidence from the record. Opposer

in no way led applicant to believe that no documents or

evidence satisfied applicant’s discovery requests. Rather,

a number of opposer’s responses were simply objections to

the scope and breadth applicant’s requests. Opposer did not

state that no relevant documents were in its possession or

control. If applicant was unsatisfied with opposer’s

failure to produce any documents in response to its

request, under the Board’s rules it was incumbent upon

5
In light of opposer’s statement, we limited our review of these
twenty-four registrations to the purpose opposer identifies.

8
Opposition No. 91170977

applicant to file a timely motion to compel. Applicant,

having failed to do so, has waived its right to object to

such testimony and evidence on the ground that it was not

produced during discovery. See H.D. Lee Co. v. Maidenform

Inc., 87 USPQ2d 1715, 1719 (TTAB 2008) (party that receives

response it believes inadequate but fails to file a motion

to test sufficiency of response, may not thereafter

complain about its insufficiency); Time Warner

Entertainment Co. v. Jones, 65 USPQ2d 1650, 1656 (TTAB

2002) (having failed to file motion to compel, defendant

will not later be heard to complain that interrogatory

responses were inadequate); and British Seagull Ltd. v.

Brunswick Corp., 28 USPQ2d 1197, 1201 (TTAB 1993) (where

applicant gave partial answers and otherwise objected to

requests as cumulative or burdensome but opposer did not

file motion to compel, modify discovery requests, or

otherwise pursue the requested material, evidence

introduced by applicant at trial was considered), aff’d, 35

F.3d 1527, 32 USPQ2d 1120 (Fed. Cir. 1994). In part, it was

applicant’s own broadly worded requests and subsequent

inaction following opposer’s repeated objections that

prevented applicant from obtaining opposer’s evidence prior

to trial. Under these circumstances, applicant cannot

assert prejudice.

9
Opposition No. 91170977

Applicant’s Second Motion to Strike

Applicant’s Second Motion to Strike objects to the

Grampp and first Lehner declarations and attached exhibits6

for the following reasons:

1. Portions of the Grampp declaration and exhibits as
improperly withheld from discovery, as hearsay, as
lacking foundation, as not based on the declarant’s
personal knowledge, and without evidentiary support;
and
2. Portions of the first Lehner declaration and
exhibits as withheld from discovery, and as hearsay.

Inasmuch as applicant did not file a motion to compel

in response to opposer’s failure to produce any documents,

as discussed above, we find that the Grampp and First

Lehner declarations and exhibits were not improperly

withheld from discovery. Accordingly, applicant’s

objections to the Grampp and First Lehner Declarations and

exhibits on these grounds are overruled. See H.D. Lee Co.

v. Maidenform Inc., 87 USPQ2d at 1719.

Applicant’s remaining objections to the Grampp and

First Lehner declarations and exhibits on the grounds of

hearsay, lacking foundation, not based on the declarant’s

6
Applicant’s Second Motion to Strike at 1. Since we do not
address opposer’s unpleaded claims of no bona fide intent to use
the mark, abandonment, and fraud, we do not need to consider
applicant’s objections to the Kesicki and Watts declarations on
these grounds. The second Lehner declaration is discussed infra.

10
Opposition No. 91170977

personal knowledge, and lack of evidentiary support are,

for the most part, equally unpersuasive.

As to the Grampp declaration we find that applicant’s

objections to Ms. Grampp’s testimony are without merit. Ms.

Grampp testified that she had the requisite knowledge

supporting the statements made and that she was familiar

with the business records, financial information, brand

history, and marketing and promotion of the BARBIE brand.

Cf., Crash Dummy Movie, LLC v. Mattel, Inc., 601 F.3d 1387,

94 USPQ2d 1315, 1317 (Fed. Cir. 2010).

As to the survey information (exhibits M and N to the

Grampp declaration) applicant’s objection that the surveys

lack foundation is overruled in part. The Grampp

declaration identified the surveys as annual tracking

surveys conducted in the ordinary course of business and

the 2009 US Boys and Girls Tracking Study (Exhibit N)

provides ample description of the survey methodology.

Therefore, we have considered it. However, we note that the

Total Unaided Awareness survey (exhibit M) lacks any

discussion of methodology and we have not considered this

survey.

As to any hearsay objections regarding the remaining

exhibits attached to these declarations, we find that the

involved documents are being offered only for “what they

11
Opposition No. 91170977

show on their face,” not for the truth of the statements

contained therein. TBMP § 704.08(c) (3d ed. 2012). We have

considered them for whatever probative value they may have.

Standing

Opposer has shown through the TESS printouts made of

record that it is the owner of the pleaded registrations

and that the registrations are valid and subsisting.

Because opposer’s registrations are of record, opposer has

established its standing. Cunningham v. Laser Golf Corp.,

222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton

Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ

185, 189 (CCPA 1982).

Priority

Because opposer’s pleaded registrations are of record,

Section 2(d) priority is not an issue in this case as to

the mark and the products covered by the registrations.

King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d

1400, 182 USPQ 108, 110 (CCPA 1974).

Likelihood of Confusion

Opposer asserts likelihood of confusion under Section

2(d) of the Trademark Act. 15 U.S.C. § 1052(d). Opposer

alleges that applicant’s mark when used in connection with

applicant’s services so resembles opposer’s previously used

12
Opposition No. 91170977

and registered BARBIE marks, as to be likely to cause

confusion.

Our determination under Section 2(d) is based on an

analysis of all of the probative facts in evidence relevant

to the factors bearing on the likelihood of confusion

issue. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357,

177 USPQ 563 (CCPA 1973). Not all of the du Pont factors

are relevant to every case, and only factors of

significance to the particular mark need be considered. In

re Dixie Restaurants, Inc., 105 F.3d 1405, 41 USPQ2d 1531,

1533 (Fed. Cir. 1997). Moreover, it is the opposer’s burden

to establish facts sufficient to support the conclusion

that confusion, mistake, or deception is likely.

Bridgestone Americas Tire Operations LLC v. Federal Corp.,

673 F.3d 1330, 102 USPQ2d 1061, 1063 (Fed. Cir 2012).

A. The fame of opposer’s marks.

This du Pont factor requires us to consider the fame

of opposer’s marks. Fame, if it exists, can play a dominant

role in the likelihood of confusion analysis because famous

marks enjoy a broad scope of protection or exclusivity of

use. A famous mark has extensive public recognition and

renown. Bose Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367,

63 USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot Inc. v. M.C.

Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir.

13
Opposition No. 91170977

2000); Kenner Parker Toys, Inc. v. Rose Art Indus., Inc.,

963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992). In

this regard, the Court of Appeals for the Federal Circuit

has stated the following: [T]here is “no excuse for even

approaching the well-known trademark of a competitor . . .

and that all doubt as to whether confusion, mistake, or

deception is likely is to be resolved against the newcomer,

especially where the established mark is one which is

famous.” Nina Ricci S.A.R.L. v. E.T.F. Enters. Inc., 889

F.2d 1070, 12 USPQ2d 1901, 1904 (Fed. Cir. 1989), quoting,

Planter’s Nut & Chocolate Co. v. Crown Nut Co., 305 F.2d

916, 134 USPQ 504, 511 (CCPA 1962).

Fame may be measured indirectly by the volume of sales

and advertising expenditures of the goods and services

identified by the marks at issue, “by 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. v. QSC Audio Prods. Inc., 63

USPQ2d at 1305-1306 and 1309. Although raw numbers of

product sales and advertising expenses may have sufficed in

certain circumstances to prove fame of a mark, raw numbers

alone may be misleading. The context surrounding the raw

14
Opposition No. 91170977

statistics may be necessary (e.g., the substantiality of

the sales or advertising figures as compared to those

providing comparable products or services). Bose Corp. v.

QSC Audio Prods. Inc., 63 USPQ2d at 1309.

Finally, 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, 82

USPQ2d 1901, 1904 (TTAB 2007).

Opposer introduced evidence of the following to

establish the fame of its mark:

1. Opposer began using the BARBIE mark on dolls on March
9, 1959;7
2. More than one billion BARBIE dolls have been sold over
the past 50 years in over 150 countries.8
3. Opposer sells BARBIE dolls that have been specifically
designed to appeal to the adult collector market.9
4. Opposer also sells a variety of goods and services
under the BARBIE brand. Each year opposer offers
“roughly 3,000 different BARBIE branded products.”10
5. Opposer uses the BARBIE marks in connection with
entertainment services and has released fifteen
animated BARBIE movies in the previous ten years.11

7
Grampp declaration, para. 8.
8
Id., para. 10
9
Id., para. 13.
10
Id., para. 16.
11
Id., para. 20.

15
Opposition No. 91170977

6. Total annual sales under the BARBIE brand are more
than two billion dollars, of which, more than half
comes from sales other than toys.12
7. BARBIE branded products are sold in many forms of
retail outlets, including dollar stores, grocery
stores, drug stores, mass market retailers, department
stores, and specialty boutiques.13
8. Each year, opposer spends “tens of millions of
dollars” promoting the BARBIE brand through
advertising and promotional events.14
9. Opposer’s BARBIE products have been the subject of
newspaper and magazine articles which refer to the
fame of the BARBIE character. The following excerpts
are representative of the publicity opposer’s BARBIE
doll has received:15
• Buffalo News, Susan Martin, Barbie Beautiful at
50, March 8, 2009, stating BARBIE is an “iconic
fashion doll;”
• Los Angeles Times, Emili Vesilind, Under Her
Spell, March 8, 2009, stating that BARBIE is “the
most iconic plastic female of all time;”
• Boston Herald, Raakhee P. Mirchandani, The
Shopper; Barbie Goes Uptown with Designer Dolls,
July 18, 2004, stating that “Barbie is the
ultimate fashion icon;”
• Los Angeles Times, Leslie Earnest, Good Old
Barbie, May 1, 1997, stating that BARBIE is a
“world-famous name;”
• Cleveland Plain Dealer, Bryon Lars, April 11,
1996, noting that a fashion designer considers
BARBIE to be “a celebrity even more famous than
Madonna;”

12
Id., para. 21. Ms. Grampp did not specify whether her testimony
referred to sales limited to the United States or to worldwide
sales.
13
Id., para. 22.
14
Id., para. 23. Ms. Grampp did not specify whether her testimony
referred to advertising and promotional events limited to the
United States or to worldwide sales.
15
Opposer’s first notice of reliance, Exhibits A3, A4, A9, A46,
A52, A67, and A73.

16
Opposition No. 91170977

• The New York Times, Robert Plunket, Age Cannot
Wither Her, Nor Custom Stale, April 18, 1993,
stating that BARBIE is “right up there with
Elvis;” and
• The New York Times, Alice Kahn, A Onetime Bimbo
Becomes a Muse, September 29, 1991, stating “She
is Barbie, needing only one name, like Madonna or
Elvis or Picasso . . . [an] icon of American
womanhood.”
10. Six federal court decisions finding, inter alia, that
BARBIE brand dolls are famous for purposes of
dilution. The following excerpts are representative of
the findings of the courts:
• “The Court concludes that—by any measure—the
world-known BARBIE is a ‘famous’ trademark under
the Federal Anti–Dilution Act;”16
• “The Court finds that, by any measure of the
above factors which have been set forth by the
Federal Trademark Dilution Act, the trademark
BARBIE is both ‘distinctive’ and ‘famous’ for
purposes of Section 1125(d);”17 and
• “[BARBIE] remains a symbol of American girlhood,
a public figure who graces the aisles of toy
stores throughout the country and beyond. With
Barbie, Mattel created not just a toy but a
cultural icon.”18

Based on this record, we have no doubt that opposer’s

BARBIE marks are famous for purposes of likelihood of

confusion; therefore, they are entitled to a broad scope of

protection. This factor favors opposer.

16
Mattel Inc. v. Jcom Inc., 48 USPQ2d 1467, 1470 (S.D.N.Y. 1998).
17
Mattel Inc. v. Internet Dimensions Inc., 55 USPQ2d 1620, 1622-
23 (S.D.N.Y 2000).
18
Mattel Inc. v. MCA Records Inc., 63 USPQ2d 1715, 1717, 1721
(9th Cir. 2002).

17
Opposition No. 91170977

B. Similarity or dissimilarity of the services described
in the application and registrations, the channels of
trade, and classes of consumers.

This du Pont factor requires us to determine the

similarity or dissimilarity of the services as identified

in applicant’s application and in the cited registrations,

respectively. Under the third du Pont factor we also

determine the similarity or dissimilarity of the trade

channels in which and the purchasers to whom the respective

services would be marketed.

To review, opposer’s services, as identified in the

three registrations most similar to applicant’s, are:

“providing information over a global computer
network featuring games, stories, directories for
toys and games, toy collectibles, and chat
sessions,” in International Class 42;

“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,” in
International Class 41; and

“entertainment services, namely, live appearances
by a costumed character,” in International Class
41.

Applicant’s services are identified as:

“Entertainment services, namely, providing a web
site featuring photographs, video presentations,
and information about a model; adult
entertainment services, namely, providing a web
site featuring photographs, video presentations
and information about a model; entertainment
services, namely, live appearances by a model” in
International Class 41.

18
Opposition No. 91170977

At the outset, we note that some of applicant’s

services are not limited to “adult entertainment services.”

Accordingly, applicant’s argument that there is “no

evidence that adult modeling services and toy doll related

goods and services are sold under circumstances likely to

give rise to the mistaken belief that the products emanate

from the same source” is simply beside the point.

Applicant’s Br. at 45. It is well-settled that we must

determine likelihood of confusion based on the services as

they are identified in the application.

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 goods, the particular
channels of trade or the class of purchasers to
which sales of the goods are directed.

Octocom Systems, Inc. v. Houston Computers Services Inc.,

918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Thus,

we must presume that applicant’s website services and live

appearances by a model are not limited to consumers seeking

only adult entertainment but are marketed and available to

all consumers regardless of age, gender, or other

attributes.

Regarding the website services, both opposer’s and

applicant’s websites appear to provide information relating

19
Opposition No. 91170977

to the person or character named in the mark.19 That is,

opposer’s websites offer information, games, stories,

directories, and chat sessions about its BARBIE character

and applicant’s website site offers information,

photographs, and video presentations about the personality

known as BARBIE GRIFFIN. Thus, both websites are similar in

the sense that they are providing the same type of

biographical information and supplemental material about

their respective characters. Although those characters may

in fact have very different attributes and audiences, any

such differences are not reflected in the identification of

services. Accordingly, we find that applicant’s website

entertainment services are closely related to opposer’s

website entertainment and information services.

In the absence of any limitations as to channels of

trade or purchasers, we also must presume that these

closely-related services would be marketed in the same

trade channels and to the same classes of purchasers. See

In re Smith & Mehaffey, 31 USPQ2d 1531 (TTAB 1994); In re

Elbaum, 211 USPQ 639 (TTAB 1981).

Turning to the entertainment services comprising live

appearances by a “costumed character” or a “model,” we find

19
Grampp declaration, exhibit K and L; applicant’s specimen of
use, March 10, 2005.

20
Opposition No. 91170977

these services are very closely related. The only

difference between the services is the language “costumed

character” in opposer’s registration and “model” in

applicant’s application. Both services involve live

appearances by individuals and presumably differ only in

the persona and clothing of the entertainer. Given that

the record shows that opposer’s BARBIE character is

regarded as a “fashion icon” known for modeling clothes and

representing any number of female roles,20 we find that the

similarity of the wording “costumed character” and “model”

suggests that these services are very closely related.

These factors favor opposer.

C. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We next consider the similarity of the marks as to

appearance, sound, connotation and commercial impression.

Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison

Fondee en 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed.

Cir. 2005). The test, under this du Pont factor, is not

whether the marks can be distinguished when subjected to a

side-by-side comparison, but rather whether the marks are

sufficiently similar in terms of their overall commercial

impression that confusion as to the source of the services

20
Opposer’s First Notice of Reliance, Exhibits A1-A77.

21
Opposition No. 91170977

offered under the respective marks is likely to result. The

focus is on the recollection of the average purchaser, who

normally retains a general rather than a specific

impression of trademarks. See Sealed Air Corp. v. Scott

Paper Co., 190 USPQ 106 (TTAB 1975). While we must consider

the marks in their entireties, in articulating reasons for

reaching a conclusion on the issue of likelihood of

confusion, there is nothing improper in stating that, for

rational reasons, more or less weight has been given to a

particular feature of a mark. See In re Nat’l Data Corp.,

753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).

Opposer’s marks consist entirely of the word BARBIE in

typed form. Applicant’s mark consists entirely of the words

BARBIE GRIFFIN in standard characters and incorporates

opposer’s BARBIE mark in its entirety. We cannot say that

one term in applicant’s mark dominates over the other but

rather that the full name BARBIE GRIFFIN will be taken as a

whole. That being said, the first part of applicant’s mark

is identical to the entirety of opposer’s mark. Presto

Prods. Inc. v. Nice-Pak Prods. Inc., 9 USPQ2d 1895, 1897

(TTAB 1988) (“there are also similarities between them in

that both start with the term ‘KID’ a matter of some

importance since it is often the first part of a mark which

is most likely to be impressed upon the mind of a purchaser

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Opposition No. 91170977

and remembered”); Palm Bay Imports, 73 USPQ2d at 1692 (“The

presence of [a] strong distinctive term as the first word

in both parties’ marks renders the marks similar.”).

With regard to connotation, both are names and would

be perceived as such. The argument that the marks are

distinct because BARBIE GRIFFIN refers to a specific

individual is not persuasive. BARBIE by itself also could

be perceived as referring to a specific individual.

Consumers, when presented with the identical or closely-

related services under the respective BARBIE and BARBIE

GRIFFIN marks, are likely to perceive these two marks as

the same name with one being the shortened form of the

other. In Re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d

1257, 1260 (Fed. Cir. 2010) (ML is likely to be perceived

as a shortened version of ML MARK LEES). This is especially

likely if consumers do not know that opposer’s BARBIE

character has a different last name because, as applicant

notes, ”none of the marks in the BARBIE registrations . . .

join the BARBIE mark with a surname.” Applicant’s Br. at

47. Put another way, if consumers are not used to seeing

opposer’s BARBIE linked to a last name, these consumers,

upon seeing advertisements for live appearances for BARBIE

GRIFFIN might assume that the performances featured

opposer’s BARBIE. Thus, although applicant’s mark includes

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Opposition No. 91170977

the term GRIFFIN, when we compare the marks in their

entireties we find that on the whole they are similar in

appearance, sound, connotation and commercial impression

and that the additional wording in applicant’s mark is not

sufficient to distinguish the marks when used in connection

with related services. This factor favors opposer.

D. Remaining du Pont factors

We have considered the remaining arguments and

evidence put forth by applicant but in light of the fame of

opposer’s mark, the similarity of the services, and the

similarity of the marks we find these arguments

unpersuasive. Hewlett-Packard Co. v. Packard Press Inc.,

281 F.3d 1261, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002) (“The

likelihood of confusion analysis considers all du Pont

factors for which there is evidence of record but ‘may

focus . . . on dispositive factors, such as similarity of

the marks and relatedness of the goods.’”).

E. Balancing the factors.

On balance, the relevant du Pont factors weigh heavily

in favor of a finding of likelihood of confusion. We

conclude that consumers familiar with opposer’s famous

BARBIE mark and services, upon encountering applicant’s

mark BARBIE GRIFFIN for closely-related services, would be

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Opposition No. 91170977

likely to believe that the services originate from or are

associated with or sponsored by the same entity.

In light of our finding on the issue of likelihood of

confusion, we find it unnecessary to reach the issue of

dilution as well as applicant’s objections to opposer’s

dilution pleading and related evidence, namely, the Watts,

Kesicki, and second Lehner declarations. See Miss Universe

L.P. v. Cmty. Mktg. Inc., 82 USPQ2d 1562, 1572 (TTAB 2007).

Decision: Opposition No. 91170977 is sustained.

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