If you are going to take the law into your own hands, you better be careful to face the consequences. A clothing stylist who filed her own Trademark registration for Savage Barbie has found herself in a legal battle with Mattel, owners of the BARBIE trademark.
It happened just this week. I had a client come to me with a proposed trademark. Instead of just filing it, like many people do, a trademark clearance should always be performed. A trademark clearance lets you know if anyone else out there is using your trademark and any marks that could be a barrier to getting a registration past. Sometimes a clearance are a bit more complicated like would ORANGE for cellphones be confused with APPLE. Sometimes a clearance is a lot less complicated....like the name of one of the most iconic toys of all time.
Since April 2018, Carolina Montoya has gone under the pseudonym "Savage Barbie". Montoya is a personal stylist who claims that she will make you spend less time in the closet and more time enjoying your life. From her website, we learn that Montoya has 10 years of experience helping people pick outfits, likes lollipops, and despises website design. In November 2018, Montoya filed her own trademark registration for the logo that can be seen above incorporating the BARBIE trademark.
Since 1959, Mattel has used the BARBIE mark is association with one of the most famous toys since the beginning of time. Mattel owns numerous registered trademarks for BARBIE, all which make this attempt doomed to fail. Mattel has opposed the SAVAGE BARBIE mark claiming that the SAVAGE BARBIE mark is "incompatible with the wholesome, broad appeal for which Opposer’s BARBIE® brand is known". Mattel supports this argument with photos from Montoya's "Savage Barbie" Instagram account that show scantily clad models blowing smoke from their mouths and noses.
This registration will also be up in smoke. I can't imagine that Montoya will even fight the opposition. The question is, will Mattel try to get her from using the mark completely. Using a mark is one thing, filing a trademark registration for it puts you directly on a company's radar. Another reason to think twice before filing your own trademark registrations.
