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Category: WTO Sub-category: Intellectual Property
Document type: news
A trademark appeal board has denied registration to all four trademark applications for the term "CrackBerry" for different types of goods and services, ruling that the marks would dilute Research in Motion's mark.
The U.S. Patent and Trademark Office's Trademark Trial and Appeal Board issued the decision in favour of Research in Motion Ltd. v. Defining Presence Marketing Group Inc. on Feb 27, 2012 and labeled it precedent-setting.
According to the ruling by Administrative Trademark Judge, Defining Presence had 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.
It was 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."
Defining Presence had assigned all four marks to Axel in September 2007. Research in Motion, which uses its BlackBerry mark in connection with smart phones, other devices and promotional goods, opposed all four marks on two grounds. Firstly, RIM claimed that its opponents' use of the marks would create a wave of confusion with the public. And secondly, 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.
An emailed statement from RIM cleared that it continues to have a good relationship with the editorial team at CrackBerry.com, but at the same time also obviously felt compelled to oppose the trademark application since it 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.
This was found that 'BlackBerry' 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 services, wireless data messaging services, transmission and reception of voice communication services, and computer-related consulting and educational services."
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Trademark Trial and Appeal Board (TTAB) is a body within the United States Patent and Trademark Office (USPTO) responsible for hearing and deciding certain kinds of cases involving trademarks. These include appeals from decisions by USPTO Examiners denying registration of marks, and opposition proceedings filed against trademark applications.
Research In Motion Limited (RIM) is a Canadian multinational telecommunications company headquartered in Waterloo, Ontario, Canada, that designs, manufactures and markets wireless solutions for the worldwide mobile and telecommunications market.
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