CRACKBERRY likely to cause confusion with, and dilute, BLACKBERRY

United States of America

In Research in Motion Ltd v Defining Presence Mktg Grp Inc (Opposition Nos 91178668, 91179490 and 91181076, February 27 2012), Research in Motion Ltd has successfully opposed applications by Axel Ltd Co, successor to Defining Presence Marketing Group, to register the mark CRACKBERRY for various online computer services and assorted clothing items. The Trademark Trial and Appeal Board (TTAB) of the US Patent and Trademark Office (USPTO) held that CRACKBERRY was likely to cause confusion with, and to dilute, the opponent’s famous BLACKBERRY marks for handheld devices and related goods and services.

In its analysis of the opponent’s 15 USC § 1052(d) likelihood of confusion claim, the TTAB first addressed the applicant’s contention that its CRACKBERRY mark was a non-confusing parody of the opponent’s BLACKBERRY marks. The TTAB noted that, while some federal courts have held that a successful parody may make confusion less likely, such a First Amendment argument is not as strong at the TTAB because the question at issue at the USPTO is right to registration, rather than right to use. A finding of likelihood of confusion will therefore “usually trump any First Amendment concerns” for USPTO registration issues. 

The TTAB then turned to the analysis of the likelihood of confusion factors, noting that the salient question is whether there is a likelihood that the relevant purchasing public will be misled into believing that the goods and/or services under the involved marks originate from a common source. The TTAB first examined the opponent’s extensive use and promotion of the BLACKBERRY marks since 1999, and found that BLACKBERRY has become famous for handheld smart phone devices and related information-technology services. A famous mark is accorded “extreme deference” in the likelihood of confusion analysis. 

The TTAB then addressed the similarity of the marks, and held that the marks sounded alike and that the visual similarities between the marks outweighed any differences created by the applicant’s 'CR' prefix. Further, the TTAB found that the marks had similar commercial impressions because consumers widely referred to the opponent’s Blackberry devices by the nickname 'CrackBerry' prior to the applicant’s adoption of this mark - to such an extent that 'CrackBerry' was selected as 'word of the year' in 2006 by Webster’s New World Dictionary. 

After establishing that the marks were highly similar, the TTAB examined the similarity of the relevant goods and services. The applicant argued that there was no overlap between the parties’ goods and services, because the applicant’s services concern online chat rooms and retail store services for wireless device accessories, while the opponent’s goods and services relate primarily to its handheld devices and related support services. The TTAB disagreed, noting that “it is not necessary that the goods and services overlap in order to be found to be related in such a way that confusion is likely”, and holding that the applicant’s recited online and computer-related services were closely related to the opponent’s broadly stated goods and services. The TTAB excluded the applicant’s clothing-related goods in Class 25 from this finding, despite the opponent’s claim of common law trademark rights in BLACKBERRY for clothing, which the TTAB found to be unsubstantiated. The TTAB then examined the respective trade channels and found a “large overlap” between the marks, particularly because the applicant’s marketing specifically targets the opponent’s customers. 

For all of these reasons, the TTAB concluded that the applicant’s use of CRACKBERRY in connection with its applied-for services in Classes 35, 38, and 42 resulted in a likelihood of confusion with BLACKBERRY.

The TTAB then addressed the opponent’s claims of dilution under 15 USC § 1125(c). For the first factor in the dilution analysis, the TTAB restated its previous finding that the BLACKBERRY marks are famous - a fact which even the applicant conceded in their trial brief - based on the opponent’s evidence of massive sales volume, extensive promotional and advertising expenditures, and widespread media attention. The TTAB noted that a dilution analysis requires a higher standard of fame than a likelihood of confusion analysis, and emphasised that BLACKBERRY should be ranked among the most famous and valuable trademarks in the world. The TTAB also noted that the fame of the BLACKBERRY marks began several years before the applicant filed its intent-to-use applications for CRACKBERRY in December 2006.       

Having established BLACKBERRY’s fame and priority, the TTAB considered whether CRACKBERRY was likely to blur the distinctiveness of the BLACKBERRY marks. The TTAB restated its key findings from its likelihood of confusion analysis, and found that the applicant clearly intended to create an association with the opponent’s famous and inherently distinctive BLACKBERRY marks when it chose to adopt CRACKBERRY as its source indicator. The TTAB noted that the applicant’s persistent claims of an attempted parody underscored its awareness of the BLACKBERRY mark and intent to create a very close association with the mark. The TTAB held that all of the statutory factors favoured the opponent, and that CRACKBERRY was likely to impair the distinctiveness of BLACKBERRY. 

Finally, the TTAB addressed the applicant’s argument that CRACKBERRY was an attempt to parody the famous BLACKBERRY mark and should be protected under the 'fair use' safe harbour of 15 USC § 1125(c)(3)(A). The TTAB cited the statute’s specific protection for “[a]ny fair use, including a nominative or descriptive fair use, or facilitation of such fair use, of a famous mark by another person other than as a designation of source for the person’s own goods or services…”. The applicant’s use of CRACKBERRY as a designation of source for its own goods and services therefore excluded the mark from the safe harbour provision on that basis alone. 

The applicant nonetheless argued that, under the Fourth Circuit Court of Appeals’ decision in Louis Vuitton Malletier SA v Haute Diggity Dog LLC (Chewy Vuitton), the opponent had an increased burden to demonstrate that the applicant’s CRACKBERRY 'parody' was likely to impair the distinctiveness of its famous BLACKBERRY marks.  The TTAB disagreed, noting that even the Louis Vuitton court recognised that the fair use safe harbour did not extend to parodies used in a trademark sense. 

The TTAB found that two factors undercut the effectiveness of the applicant’s parody claim. First, the public itself adopted and popularised the term 'CrackBerry' as a nickname for BLACKBERRY handheld devices. Therefore, the mark does not solely, if at all, reflect the applicant’s asserted attempt to create a parody of BLACKBERRY.  Second, the applicant used CRACKBERRY for services that are closely related to the opponent’s goods and services. One of the core reasons why the Louis Vuitton 'Chewy Vuitton' parody was held to be effective was that it juxtaposed two “wildly different” items - an inexpensive chewable dog toy and an expensive handbag. The TTAB concluded that the applicant’s use of CRACKBERRY to market its online services and sell clothing items would blur the distinctiveness of the BLACKBERRY marks, rather than create a non-source-indicating parody that should be protected by the fair use provisions. 

Ron N Dreben and Dana M Nicoletti, Morgan Lewis & Bockius LLP, Washington DC

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