In a precedential opinion, on February 27, 2012 the US Trademark Trial and Appeal Board sustained four oppositions filed by Research in Motion (RIM) against Defining Presence Marketing Group, Inc. (DPMG). Link to Case here. DPMG had filed four trademark applications, each for the mark CRACKBERRY. ? Three of the CRACKBERRY applications were filed in 2006 and one was filed in 2007.? Each application included a diferent class of goods/services on which the mark was to be used.? As a result of the TTAB decision all four DPMG trademarks have been refused registration.
Dilution by Blurring
Dilution by blurring is an association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark. Trademark Dilution Revision Act of 2005, 15 U.S.C. ? 1125(c)(2)(B) [TDRA].
Over time, the gradual whittling away of distinctiveness will cause the trademark holder to suffer ?death by a thousand cuts.?? See National Pork Board v. Supreme Lobster and Seafood Co., 96 USPQ2d 1479, 1497 (TTAB 2010)(citing Barton Beebe, ?A Defense of the New Federal Trademark Antidilution Law,? 16 FORDHAM INTELL. PROP. MEDIA & ENT. L.J. 1143, 1163 (2006)).
The public at large had adopted the nickname ?Crackberry? for Blackberry smart phones prior to the filing date of the DPMG trademark applications.? Also, as of the year 2000, ?Crackberry? had achieved dictionary status as a slang term? and had even been selected ?Word of the Year? (2006) by the staff of Webster?s New World Dictionary.
DPMG in effect conceded that the BLACKBERRY and CRACKBERRY were highly similar by stating that Crackberry is a nickname for the Blackberry device.
After balancing factors of relatedness of goods/services,? channels of trade similarity of marks, and famousness of the the BLACKBERRY mark, the TTAB concluded that RIM was likely to suffer impairment of the distinctiveness of its marks, and hence RIM has shown a likelihood of dilution by blurring under the Trademark Act.
Parody
DPMG argued that CRACKBERRY was a legitimate satire of RIM?s famous BLACKBERRY mark.? Under Section 43 of the Lanham Act, parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner are not actionable as dilution or blurring by tarnishment.? The basic problem with parody as a defense is that DPMG was using CRACKBERRY for goods and services that are directly related to the goods and services on which the BLACKBERRY mark is used.
DPMG cited for support of its parody argument the Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC case, 507 F.3d 252, 84 USPQ2d 1969 (4th Cir. 2007).? In the Luis Vuitton case, the defendant?s used the mark CHEWY VUITON for pet chew toys.? The Virginia Fourth Circuit Appellate Court permitted use of CHEWY VUITON as a ?fair use? exception to the rule against dilution by blurring.
The TTAB gave two reasons for rejecting parody defense.
First, the term CRACKBERRY was adopted and popularized by the public as a nickname for BLACKBERRY devices.? So the name does not solely ? if at all ? reflect DPMG?s attempt to parody the BLACKBERRY mark.
Second, DPMG is using the CRACKBERRY mark on goods and services that are related to the BLACKBERRY mark.? on the DPMG website www.crackberry.com, Blackberry user forums, and Blackberry accessories are provided.? As contrasted with the Louis Vuitton case, the difference was in that case there was a ?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. Id. at 1974.
RIM may have prevailed in these oppositions against DPMG and the use of CRACKBERRY, but as of the time of this writing, DPMG is still using CRACKBERRY at www.crackberry.com.? It remains to be seen if RIM will pursue action against DPMG or risk a laches defense by DPMG.? In view of the curren annihilation of RIM?s market share by Apple and Android devices, perhaps RIM should concentrate more on innovation than litigation if they intend to stay in the smart phone market to fight another day.
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