Wednesday, April 4, 2012

Crackberry Marks are Opposed by Blackberry

I personally find trademark law to be fascinating. Here is another post about trademarks that explains my fascination with this area of law. The Trademark Trial and Appeal Board of the USPTO recently issued an opinion about whether the name Crackberry is a fair use parody on the name Blackberry and can therefore be trademarked. reviews and offers for sale Blackberry products and accessories. Back in 2007, its owner, Defining Presence Marketing Group, Inc., filed four trademark applications for the word Crackberry in different classes (25 – clothing; 35 – marketing services; 38 – telecommunications and 42 – computer services). The trademark registrations got opposed by Research in Motion Limited, the owner of the marks Blackberry. Defining Presence claimed that the word is a fair use parody on the name Blackberry, and should be allowed to proceed with registration. Finally, in February 2012, the Board issued its decision which agreed with the makers of Blackberry that the name Crackberry should be refused trademark registration.

The Board disagreed with the defendants’ argument that the word was a fair use parody because the Crackberry mark was being used for the same goods and services as Blackberry. A good example of fair use parody in trademark law is the “Chewy Vuitton” case (Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 84 USPQ2d 1969 (4th Cir. 2007)), in which the company Haute Diggity Dog chose to name their pet chew toys Chew Vuitton, as a joking reference to the luxury Louis Vuitton handbags. The Fourth Circuit Court of Appeals found that, given the rhyming marks, the trade dress, etc., the use of the mark on an entirely different line of products was permitted as “fair use” exception to the rule against dilution by blurring.

In this case, however, because of the substantial overlap in products of Defining Presence and Research in Motion, the Board found that there was a likelihood of customer confusion between the names, and a likelihood of dilution by blurring the distinctiveness of the famous Blackberry marks.

You can access the Board’s opinion on the USPTO website.

This article is not a legal advice, and was written for general informational purposes only.  If you have questions or comments about the article or are interested in learning more about this topic, feel free to contact its author, Arina Shulga.  Ms. Shulga is the founder of Shulga Law Firm, P.C., a New York-based boutique law firm specializing in advising individual and corporate clients on aspects of business, corporate, securities, and intellectual property law.

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