In a likelihood of confusion analysis under Section 2(d), 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.”).  

The TTAB recently found that the applied-for BARBEE INC. mark was dissimilar to BARBIE, and the applied-for “Online social networking services accessible by means of downloadable mobile applications” were unrelated to entertainment services. Mattel, Inc. v. BarBee Inc., Opposition No. 91281982 (TTAB Feb. 6, 2026). 

While BARBEE may sound similar to BARBIE, they “have nothing else in common.” 

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, 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 (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).

As for the relatedness of the respective goods and services, the display of the BARBIE marks on third-party social networking platforms does not, without more, render the parties' goods and services highly related. “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.” 

Furthermore, while the BARBEE mobile application is available in the Google Play store and the Apple App Store, and is marketed through Facebook, Instagram and TikTok accounts; there was 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. Thus, the TTAB concluded that the channels of trade did not overlap.

The registered BARBIE marks were found to be commercially very strong for purposes of likelihood of confusion for “dolls” and “doll clothes,” and “doll houses”; and “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.” But this commercial strength did not overcome the dissimilarity of the marks or the lack of relateness in their goods and services. 

Also, while the TTAB also found the mark BARBIE to be famous, for dilution purposes, in connection with dolls, the marks were dissimilar “in appearance, meaning and commercial impression such that the former does not readily conjure up the latter.” Furthermore, there was no evidence of an intent create an association with the BARBIE mark.

The TTABlog noted that fame only gets one so far because dilution applies “the same test as for determining the similarity or dissimilarity of the marks in the likelihood of confusion analysis,” so that the required association exits. See, e.g., Nike, Inc. v. Peter Maher and Patricia Hoyt Maher, 100 USPQ2d 1018 (TTAB 2011) (citing Coach Services Inc. v. Triumph Learning LLC, 96 USPQ2d 1600, 1613 (TTAB 2010)).