CrackBerry Crackdown: Trademark Board Not a Fan of Fan-Created Nickname

more+
less-

[author: Buntin, Stephanie]
Everybody knows somebody who seems physically unable to peel his eyes away from his smart phone screen for longer than two seconds, regardless of his visibly offended dinner company or the swerving and honking of oncoming traffic. Some find it merely uncouth, while others cry “addict!” And for that very reason, Research in Motion Limited (“RIM”)’s popular Blackberry smart phone was dubbed “CrackBerry” by its enthusiastic fans.

Capitalizing on this sensation, Defining Presence Marketing Group, Inc. (“DPMG”) created a website for Blackberry fans called www.crackberry.com, which contains blogs and forums about Blackberry devices, and sells Blackberry accessories, such as chargers, batteries, and cases. Between 2006 and 2007, DPMG filed four applications for registration of the mark CRACKBERRY on the Principal Register for use of the term in connection with various services, including marketing services, online retail services, creating an online community for registered users, and providing online chat rooms and electronic bulletin boards. DPMG also filed an application for registration for the use of CRACKBERRY in connection with headgear and various clothing items.

The Trademark Trial and Appeal Board (the “Board”), however, is apparently less than enthusiastic about the name. In a precedent-setting decision on February 27, 2012, the Board rejected four trademark applications for CRACKBERRY. In its decision, the Board sided with RIM (who had opposed the marks), and ruled that the term was likely to cause consumer confusion. Specifically, the Board found that (1) BLACKBERRY has become famous for smart phones and closely related information technology services; (2) CRACKBERRY and BLACKBERRY are highly similar marks; (3) the two parties’ services (but not goods) are similar; and (4) there is a large overlap between RIM’s trade channels and DPMG’s trade channels (and, what’s more, that DPMG’s marketing “specifically targets [RIM’s] actual customers…[DPMG’s] customers are by design substantially all prior customers of [RIM].”). Therefore, the Board sustained RIM’s oppositions to DPMG’s applications for CRACKBERRY in connection with various services, but dismissed RIM’s opposition to DPMG’s application for CRACKBERRY in connection with goods, namely, headgear and clothing items. The Board reasoned that RIM did not own any registrations that recite similar goods, and therefore DPMG’s use on those items is not likely to confuse consumers.

The Board didn’t stop there. Given that the Board had already determined that BLACKBERRY is famous for purposes of confusion, it had no trouble finding that it was also famous enough to fall victim to trademark dilution. Under federal trademark law, 15 U.S.C. § 1125(c), there are two types of dilution. The first is “dilution by blurring,” which happens when there is an association between two similar marks that impairs the distinctiveness of a famous mark. The second type, “dilution by tarnishment,” occurs where there is an association between two similar marks that harms the reputation of a famous mark. In this case, the Board was concerned with dilution by blurring. Ultimately, the Board decided that CRACKBERRY was likely to impair the distinctiveness of BLACKBERRY because the marks are highly similar, BLACKBERRY is inherently distinctive because it is an arbitrary trademark (a real English word that is used on goods or services that are unrelated to the name), RIM’s use of BLACKBERRY is virtually exclusive in the field, the BLACKBERRY mark has become “one of the most prominent marks in our digital, wireless culture,” DPMG intended to create an association between CRACKBERRY and BLACKBERRY in the minds of consumers, and consumers do in fact associate the two marks.

Finally, the Board rejected DPMG’s argument that its use of CRACKBERRY constitutes a parody of the BLACKBERRY mark. Under federal trademark law, parody is a defense to trademark dilution. 15 U.S.C. § 1125 (c)(3)(A). However, in order for this defense to work, the person using the famous mark cannot use it as “a designation of source for the person’s own goods or services.” In this case, fans coined the term CRACKBERRY as a nickname for the BLACKBERRY devices themselves. Secondly, the Board reasoned, DPMG uses the CRACKBERRY mark on services that are very similar to RIM’s services, a circumstance generally not present in genuine parody.

DPMG can appeal the Board’s refusal to register the CRACKBERRY marks to a United States District Court, or to the United States Court of Appeals for the Federal Circuit. It will be interesting to see whether the parties will continue to duke it out. After all, the two parties have a seemingly mutually beneficial relationship -- DPMG’s website attracts attention to RIM’s products and services, and DPMG’s business is based on the popularity of RIM’s products and services.