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June 1, 2012 Vol. 67 No. 10 Back to Bulletin Main Page

UNITED STATES: BLACKBERRY Cracks Back in Successful Dilution Claim

In a relatively rare opposition case involving a successful dilution claim, the Trademark Trial and Appeal Board (TTAB) held that the mark CRACKBERRY was likely to cause confusion with BLACKBERRY as well as dilute the distinctiveness of that famous trademark. Research in Motion Ltd. v. Defining Presence Marketing Group, Inc. & Axel Ltd. Co., Opposition Nos. 91178668, 91179490, 91181076 (T.T.A.B. Feb. 27, 2012) (precedential).

In 2006 and 2007, Defining Presence Marketing Group filed four intent-to-use applications to register the mark CRACKBERRY for clothing items and marketing, computer and communications services. Axel obtained the applications by assignment in 2007, and, after Research in Motion (RIM) opposed them later that year, the TTAB joined Axel as a defendant.

RIM claimed the mark CRACKBERRY would be likely to cause confusion with the trademark BLACKBERRY, as used and registered by RIM for “handheld devices including smart phones and related goods and services as well as promotional and collateral goods.” RIM also claimed CRACKBERRY would dilute the distinctive quality of its allegedly famous mark.

The defendants argued that their mark was a parody of BLACKBERRY, and the TTAB acknowledged that some court cases indicated that “a successful parody seems to make confusion less likely.” The Board also noted that when courts deal with trademark issues, the First Amendment’s “protective penumbra of free speech” may make a finding of infringement less likely.

However, the TTAB said the question of an applicant’s right to registration under Section 2(d) of the Lanham Act is a “narrower” one, so in that context “the First Amendment claim is not as strong as with issues of restraint on use.” Thus, if the du Pont factors for determining likelihood of confusion point to a similarity between the parties’ respective goods or services and the relevant channels of trade such that consumers might believe those goods or services have a common source, “the likelihood of confusion will usually trump any First Amendment concerns.”

Before applying the du Pont factors, the TTAB considered whether BLACKBERRY was a famous mark. The Board noted that RIM had sold billions of dollars’ worth of BLACKBERRY products to millions of consumers and spent tens of millions of dollars advertising and promoting the mark. It also noted that the media have extensively covered the BLACKBERRY brand and that BLACKBERRY consistently appears on the lists of the most famous and valuable trademarks in the world. Thus, the TTAB concluded, BLACKBERRY was a famous mark and therefore was entitled to a “wide latitude of legal protection.”

Given the marks’ similarities in sight and sound and the fact that the public began using the nickname “Crackberry” to refer to “addictive” BLACKBERRY devices before the defendants applied to register the CRACKBERRY mark, the TTAB readily found that the du Pont factors pointed to a likelihood of confusion. It further found that the du Pont factors supported RIM’s position that its goods and services and the defendants’ services were closely related.

The TTAB also determined that there was a “large overlap” in the parties’ channels of trade, given that “applicants’ prospective customers are by design substantially all prior customers of opposer.” Accordingly, it found a likelihood of confusion with respect to the applicants’ three applications to register the mark CRACKBERRY for services. (Because of a lack of relevant evidence of record, the TTAB did not agree that RIM’s alleged common-law rights in BLACKBERRY supported its position regarding the defendants’ application for clothing.)

Turning to the issue of dilution under Section 43(c) of the Lanham Act, the TTAB found that the BLACKBERRY trademark was sufficiently famous to meet the higher standard for fame required in the dilution context. It found, moreover, that BLACKBERRY was famous before the application filing dates.

The TTAB then considered whether, under the statutory factors, the CRACKBERRY mark was likely to dilute, by blurring, the distinctiveness of the trademark BLACKBERRY. Noting that in their parody defense the applicants had conceded some similarity between the marks, the Board found “a high degree of similarity.” It further found that BLACKBERRY was a distinctive and widely recognized mark and that RIM was engaged in substantially exclusive use of the mark.

Finally, the TTAB found that the applicants intended to, and did, choose a mark that the public would associate with the BLACKBERRY trademark. The Board therefore concluded that all six statutory factors supported RIM’s contention that CRACKBERRY was likely to dilute BLACKBERRY.

The TTAB considered at some length whether the applicants were entitled to the statutory “fair use” defense of parody under Section 43(c). It observed that the parody defense was available to an entity only if the parody was not used to designate the source of that entity’s goods or services. The Board noted that “Crackberry” was a popular nickname for BLACKBERRY devices and that the applied-for services were, for the most part, closely related to RIM’s goods and services. Accordingly, the TTAB sustained RIM’s opposition to all four applications on the ground of dilution.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2012 International Trademark Association