A trademark appeal board has denied registration to four trademark applications for the term “CrackBerry” for different types of goods and services, ruling that the marks would dilute Research in Motion Ltd.’s BlackBerry mark.
The U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board issued the decision in Research in Motion Ltd. v. Defining Presence Marketing Group Inc. on Feb. 27 and labeled it precedent-setting.
According to the ruling by by Administrative Trademark Judge David Bucher, Defining Presence filed four applications to register ‘CrackBerry’ between December 2006 and May 2007. The applications were to use the mark in connection with Web-based marketing services, computer services, online chat rooms and clothing.
Defining Presence assigned all four marks to Axel Ltd. Co. in September 2007. Research in Motion, which uses its BlackBerry mark in connection with smartphones, other devices and promotional goods, opposed all four marks on two grounds. RIM claimed that that its opponents’ use of the marks would create a likelihood of confusion with the public. RIM also claimed that use of the CrackBerry marks would lead to dilution — a diminishment of the distinctive quality of RIM’s marks under the Trademark Act.
The four applications were published for opposition between July and November 2007.
Defining Presence and Axel argued to the trademark appeal board that they should win on the likelihood of confusion question because CrackBerry is a parody of Blackberry.
Bucher sustained all four of RIM’s oppositions on the ground of likelihood of dilution of RIM’s trademarks by blurring. He also sustained three of RIM’s oppositions, except for the application involving use of the mark with clothing, on the ground of likelihood of confusion.
Bucher found that ‘BlackBerry’ has met the legal threshold to be considered a famous trademark “for handheld devices such as smart phones and closely-related information technology services, such as paging services, email service, wireless data messaging services, transmission and reception of voice communication services, and computer-related consulting and educational services.”
Bucher also observed that RIM’s Blackberry devices were widely referred to by the nickname “CrackBerry,” before the applicants’ adopted the mark: “Certainly, the fact that consumers and members of the public informally refer to BLACKBERRY devices by the “CrackBerry” moniker lends further support to our ultimate conclusion on a likelihood of confusion.”
Looking at the applications, Bucher found “a close relationship between opposer’s registered goods and services and applicants’ recited services,” except for clothing. He noted that there’s no evidence that RIM used its trademark in connection with clothing before its opponents’ application.
On the parody question, Bucher distinguished the current case from a well-known 2007 ruling by the U.S. Court of Appeals for the 4th Circuit in Louis Vuitton Malletier S.A. v. Haute Diggity Dog LLC. The 4th Circuit found that Haute Diggity Dog’s “Chewy Vuiton” mark for pet chew toys was a legal parody of Louis Vuitton’s luxury handbags.
The cases are different first because “the public itself adopted and popularized ‘CrackBerry’ as a nickname” for the BlackBerry devices, Bucher wrote, adding, “applicants’ use of ‘CrackBerry’ on services that are for the most part closely related to opposer’s goods and services significantly undercuts the effectiveness of the asserted parody in avoiding dilution by blurring.”
RIM’s lawyers at Washington-based Novak Druce + Quigg referred questions to the company.
An e-mailed statement from RIM spokesperson Tenille Kennedy said that RIM “continues to have a good relationship with the editorial team at CrackBerry.com and we have a mutual desire to support BlackBerry users, but RIM also obviously felt compelled to oppose the trademark application since RIM has a responsibility to protect its own trademarks. The Trademark Trial and Appeal Board recognized BlackBerry as one of the most famous and valuable brands in the world and agreed with RIM’s views that the term ‘CrackBerry’ was adopted by the public at large over ten years ago as a humorous nickname or slang term for BlackBerry devices and that the term ‘CrackBerry’ should therefore not be allowed to be registered as a trademark in this manner by another corporation.”
Matthew Swyers of the Swyers Law Firm in Vienna, Va., who represented Defining Presence and Axel, said, “We’re disappointed, and we’re still evaluating the decision.”
Bucher noted early on in his opinion that BlackBerry previously placed ads on his client’s Web site, Swyers said, but the board did not address this in its likelihood of confusion analysis. “Millions of people viewed this and there was no actual confusion.” According to a footnote, intermediaries placed the BlackBerry-branded ads on the applicants’ Web site between November 2009 and February 2011.
“We had never seen a case where we had this clear of an absence of actual confusion and this many possibilities to have actual confusion,” Swyers said.
Sheri Qualters can be contacted at [email protected].
This article originally appeared in The National Law Journal.
