TTAB Rejects a Parody Defense in BLACKBERRY v. CRACKBERRY Oppositions

Practical Law Legal Update 3-518-2649 (Approx. 4 pages)

TTAB Rejects a Parody Defense in BLACKBERRY v. CRACKBERRY Oppositions

by PLC Intellectual Property & Technology

Key Litigated Issues

The key issues identified in the Trademark Trial and Appeals Board's (TTAB) opinion addressing the four oppositions filed by Research in Motion Ltd. against Defining Presence Marketing Group, Inc. were:

Whether the CRACKBERRY mark was likely to cause confusion with or dilute the distinctiveness of the BLACKBERRY mark.
The validity of a parody defense raised against both the likelihood of confusion and dilution claims.

Background

In 2006 and 2007, Defining Presence Marketing Group, Inc. (DPMG) filed four separate applications to register the mark CRACKBERRY for various marketing services, computer services, online chat rooms and electronic bulletin board services and assorted clothing items.

Research in Motion Limited (RIM), the owner of the trademark BLACKBERRY, opposed DPMG's attempted registration of the CRACKBERRY mark on the grounds that the CRACKBERRY mark for the applied-for goods and services would be likely to be confused with, and cause dilution of, RIM's BLACKBERRY mark which is registered for electronic handheld devices for data receipt and transmission, and related accessories and services.

DPMG raised a parody defense against both the likelihood of confusion and dilution claims.

Outcome

Except for the opposition against registration of CRACKBERRY for apparel, the TTAB sustained RIM's oppositions based on the ground of likelihood of confusion. The TTAB sustained all of RIM's oppositions on the ground of dilution. The TTAB rejected DPMG's parody defense for both claims.

Likelihood of Confusion

The TTAB assessed likelihood of confusion under the multi-factor test established in In re DuPont DeNemours & Co. The TTAB found a likelihood of confusion between the CRACKBERRY mark and the BLACKBERRY mark, as applied to the parties' respective goods and services (except apparel), because of:

The fame of the BLACKBERRY mark which, per Federal Circuit and TTAB precedent, played a dominant role in the analysis.
The similarities between the marks.
The relatedness of the respective goods and services as identified in the listings of goods and services in RIM's trademark registrations and DPMG's applications.
The overlap in the parties' channels of trade.

Dilution

Turning to dilution, the TTAB initially found RIM's BLACKBERRY mark to be a famous mark, a threshold requirement for a dilution. The TTAB then reviewed the non-exclusive factors for assessing the likelihood of dilution by blurring in a dilution case as set out in Section 43(c) of the Lanham Act, namely:

The degree of similarity between the mark and the famous mark.
The degree of distinctiveness of the famous mark.
The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark.
The degree of recognition of the famous mark.
Whether the user of the mark intended to create an association with the famous mark.
Any actual association between the mark and the famous mark.

The TTAB found that all of the statutory factors supported a finding of likelihood of dilution.

The Applicant's Parody Defense

DPMG asserted a parody defense to both the likelihood of confusion and dilution claims. The TTAB rejected the defense in both contexts.

Addressing parody as a defense to likelihood of confusion, the TTAB noted that some federal courts have found that a successful parody defense makes confusion less likely and that First Amendment considerations may be important in the context of infringement. However, TTAB proceedings involve the right to register a trademark, not the right to use a trademark, and the TTAB found that First Amendment concerns are not as strong in that context and will usually be trumped in cases where, as in this case, the key factors favor a likelihood of confusion finding.

DPMG also claimed a parody defense to the dilution claim. DPMG cited the Lanham Act's fair use exclusion from dilution liability, which includes parody. However, the TTAB noted that the exclusion applies only where the use is other than as a source designation and that by applying to register CRACKBERRY as a trademark the applicant was relying on a claim of using the alleged parody as a source designation for its own services and goods. The TTAB therefore held that the applicant's claimed use as a trademark "seemed to be precluded" from the exclusion.

The TTAB went on to consider the Fourth Circuit's decision in Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC which held that the parody inquiry does not end even if the statutory exclusion is not met. The alleged parody is still considered as part of the circumstances for determining whether a dilution claim has been established. Making this assessment the TTAB found that two factors undercut the effectiveness of the alleged parody in avoiding dilution, namely:

The fact that the public had adopted and popularized "Crackberry" as a nickname for BLACKBERRY handheld devices and therefore the name did not reflect DPMG's asserted attempt to parody RIM's marks.
DPMG's use of "Crackberry" on services closely related to RIM's goods and services significantly undercut the effectiveness of the asserted parody in avoiding dilution by blurring because a key element of parody is juxtaposition of the similar and dissimilar.

Practical Implications

This precedential opinion from the TTAB shows the difficulty of establishing a parody defense to likelihood of confusion and dilution clams in TTAB proceedings, particularly where there is strong evidence of likelihood of confusion and the applicant's goods or services are closely related to the trademark owner's.

TTAB Rejects a Parody Defense in BLACKBERRY v. CRACKBERRY Oppositions | Practical Law