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By Anandashankar Mazumdar
The maker of the popular BlackBerry mobile devices established likelihood of confusion and likelihood of dilution sufficient to prevent a Florida company from registering the term “CrackBerry” for a series of goods and services, the Trademark Trial and Appeal Board ruled Feb. 27 (Research in Motion Ltd. v. Defining Presence Marketing Group Inc., T.T.A.B., No. 91178668, 2/27/12).
Sustaining oppositions against four trademark registration applications, the board said that a fair use defense of parody does not hold as much weight in a trademark registration proceeding as it might in a pure free speech context.
Research in Motion Ltd. of Waterloo, Ontario, is a designer and maker of the BlackBerry line of popular hand-held wireless communication devices. The company holds several U.S. trademark registrations incorporating the term “BlackBerry,” dating back to 1999.
The ubiquity of the BlackBerry devices and observations that many users habitually played with its functions has earned it the nickname “CrackBerry,” a reference to the addictive properties of crack cocaine.
In 2006 and 2007, Axel Ltd. of Inverness, Fla., filed four applications with the Patent and Trademark Office, seeking to register the term “CrackBerry” for online services, computer services, marketing services, and apparel.
Research in Motion opposed all four applications, asserting that their use by Axel created a likelihood of confusion with respect to its registered trademarks.
Axel asserted a defense of fair use in the form of parody.
Administrative Trademark Judge David E. Bucher first found that Research in Motion had adequately established standing and priority for purposes of its opposition.
Turning to the issue of likelihood of confusion, the board said that when addressing a question of likelihood of confusion for the purpose of resolving a trademark registration dispute, the doctrine of fair use did not carry the same weight as it might in a free speech case.
The question here was not a general question of restricting Axel's right to disseminate speech in the form of parody, the board said, but rather a much narrower question regarding whether Axel would be permitted to obtain a trademark registration.
The board said:
[W]hen federal courts are dealing with questions of alleged infringement, the protective penumbra of free speech may well support the premise that members of the public have a right to use works in the English language to interest and amuse other persons. However, when this Board is asked the narrower question of [Axel's] right to registration under Section 2(d) of the Lanham Act, the First Amendment claim is not as strong as with issues of restraint on use. The center of balance changes even further when the risk of confusion of source, affiliation, approval, or endorsement by the source of the known expression outweighs the newcomer's claim to the right to adopt and register a humorous moniker.
If, indeed, the board were to find in Research in Motion's favor on the questions of the similarity of the parties' goods and services, the similarity in channels of trade, and consumers' belief that the goods or services originate from the same source, then “the likelihood of confusion will usually trump any First Amendment concerns.”
The board offered as an example its ruling in Starbucks U.S. Brands LLC v. Ruben, 78 USPQ2d 1741 (T.T.A.B. 2006), which refused registration of the phrase “Lessbucks Coffee” for a competitor to the Starbucks Coffee chain.
Ruben cited Deere & Co. v. MTD Products Inc., 41 F.3d 39, 32 USPQ2d 1936, 1940 (2d Cir. 1994), for the proposition that “joking uses of trademarks are deserving of less protection when the object of the joke is the mark of a directly competing product.”
Similarly, Columbia Pictures Industries Inc. v. Miller, 211 USPQ 816 (T.T.A.B. 1981), rejected an application to register “Clothes Encounters” for use on T-shirts, in the face of opposition by a motion picture producer holding rights in the 1997 film Close Encounters of the Third Kind.
The board then applied the likelihood of confusion test as set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).
The factors relating to the fame of the BlackBerry mark, the similarity of the marks, and the overlap of channels of trade weighed in favor of a finding of likelihood of confusion, the board said.
However, the factor addressing the similarity of the goods and services favored Research in Motion only with respect to three of the applications, namely, the ones for online retail services for communications devices and accessories, online and social media services, and online marketing services, the board said.
However, in evaluating the Axel application to register “CrackBerry” for apparel such as headwear, footwear, athletic wear, swimwear, shirts, pants, skirts, and underwear, the board concluded that this factor did not weigh in the opposer's favor.
The remaining Du Pont factors did not favor either party. Taking the factors together, the board concluded that there was a likelihood of confusion with regard to three of the applications.
There was no likelihood of confusion with respect to the use of the term “CrackBerry” on clothing, so the board dismissed the opposition to that application on the basis of likelihood of confusion.
However, the board found a likelihood of dilution by blurring resulting from Axel's use of the term “CrackBerry” as outlined in all four of its applications.
Turning to Research in Motion's oppositions on the issue of dilution, the board first established that the BlackBerry mark was a famous mark protected under federal trademark dilution law.
The board then applied factors for likelihood of dilution as set forth in the Trademark Dilution Revision Act of 2005, 15 U.S.C. §1125(c)(2)(B), and found that weighing for Research in Motion were the similarity of the marks, the distinctiveness of the BlackBerry mark, the exclusive use of the BlackBerry mark by Research in Motion, the degree of recognition of the BlackBerry mark, Axel's intent to create an association with BlackBerry, and the actual association between CrackBerry and BlackBerry.
Thus, the test weighed in favor of a finding of likelihood of dilution by blurring, the board concluded.
With respect to the dilution issue, the board rejected the defense of parody. Quoting from McCarthy on Trademarks and Unfair Competition, the board said that the fair use doctrine did not apply to a use amounting to “a designation of source for the person's own goods or services.” J. Thomas McCarthy, 4 McCarthy on Trademarks and Unfair Competition §24:126.
Louis Vuitton Malletier S.A. v. Haute Diggity Dog LLC, 807 F.3d 252, 84 USPQ2d 1969 (4th Cir. 2007), found that plush pet accessories, such as chew toys and dog beds featuring the name “Chewy Vuiton” were not likely to be confused with the trademarks of fashion goods maker Louis Vuitton Malletier S.A.
The board pointed out that just as in McCarthy, Louis Vuitton stated explicitly that “parodying a famous mark is protected by the fair use defense only if the parody is not ‘a designation of source for the person's own goods or services.' ”
Applying that reasoning to the instant case, the board found that the alleged parody did not avert dilution, primarily for two reasons, the primary one being that “CrackBerry” was already a well known nickname for Research in Motion's own goods. The board said:
First, and most important, the public itself adopted and popularized “CrackBerry” as a nickname for BLACKBERRY wireless handheld devices. The name does not solely—if at all—reflect [Axel's] asserted attempt to parody [Research in Motion's] marks. This circumstance alone materially distinguishes this case from the Louis Vuitton decision. Second, [Axel's] use of “CrackBerry” on services that are for the most part closely related to [Research in Motion's] goods and services significantly undercuts the effectiveness of the asserted parody in avoiding dilution by blurring.
Quoting from Louis Vuitton, the board emphasized that “one of the core reasons that ‘Chewy Vuiton' was held to be an effective parody was its ‘juxtaposition of the similar and the dissimilar': a ‘furry little imitation to be chewed by a dog and the ‘elegance and expensiveness of a LOUIS VUITTON handbag, which must not be chewed by a dog.' ”
Thus, the board rejected all four of Axel's applications, sustaining Research in Motion's oppositions on the basis of likelihood of confusion for three of them and on the basis of likelihood of dilution by blurring for all four.
The board's opinion was joined by Administrative Trademark Judges Albert Zervas and Lorelei Ritchie.
Research in Motion was represented by Jeffrey J. Morgan of Novak Druce & Quigg, Houston. Defining Presence was represented by Matthew W. Swyers of Vienna, Va.
Opinion at http://pub.bna.com/ptcj/91178668Feb27.pdf
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