[author: Andrew Baum]

The Trademark Trial and Appeal Board, which rarely sustains oppositions based on dilution, recently did so in refusing registration to CRACKBERRY for a variety of online computer services as well as clothing. The TTAB’s decision in Research in Motion Limited v. Defining Presence Marketing Group, Inc. et al, (February 27, 2012), which also sustained three of the four oppositions on the bases of likelihood of confusion, demonstrates the importance of trademark strength in contested proceedings and the reluctance of the TTAB to recognize a parody defense.

Defining Presence operates CrackBerry.com, a Web site that provides news, information, forums, and apps for users of mobile devices. In December 2006, it began filing applications to register the word mark CRACKBERRY for online services in classes 35, 38, and 42, and for clothing in class 25. Research in Motion (RIM) opposed all four applications on grounds of both likelihood of confusion and dilution.

On the likelihood of confusion claim, the TTAB began by declaring that, unlike infringement cases, registration cases do not deal with the right to use a mark, so issues of free speech are not at stake. When the issue is only the narrower one of a right to registration, “the First Amendment claim is not as strong as with issues of restraint on use.” If the other DuPont factors point to a likelihood of confusion, said the Board, that will “usually trump any First Amendment concerns.”

The Board then found a likelihood of confusion with respect to the online services, relying heavily on the fame of the BLACKBERRY mark. It noted not only on the “billions of dollars” in sales and “tens of millions of dollars” in advertising and promotion, but also the examples of “intense media attention” made of record, as well as the mark’s ranking in industry publications that rank the most powerful brands, e.g., Interbrand’s Best Global Brands and MillwardBrown Optimor’s Top 100 Most Powerful Brands. Finding that BLACKBERRY products had become “ubiquitous” by the mid-2000s, the Board held that the mark was not only strong, but also famous.

The Board went on to hold that the marks were closely similar in appearance and meaning, that the applicant’s online services were closely related to RIM’s goods, and that the channels of trade were similar since Defining Presence caters to the needs of BLACKBERRY users and designed its Web site to appeal to BLACKBERRY enthusiasts. It agreed with RIM’s argument that Defining Presence cannot operate “one of the most popular websites dedicated to BLACKBERRY owners…and at the same time claim there is no overlap or similarity in channels of trade.” The Board therefore sustained the opposition in classes 35, 38, and 42 on likelihood of confusion grounds. However, it found that clothing bore no relationship to RIM’s products, and so dismissed the class 25 opposition on that ground.

Nevertheless, RIM scored a clean sweep on dilution. The threshold issue on any dilution case is proof that the opposer’s mark is “famous.” In prior cases, the TTAB has set a high standard on this issue, finding that such well-known marks such as TORO for lawn equipment and COACH for leather goods did not merit protection as “famous” for dilution purposes. See, e.g., Toro Co. v. ToroHead Inc., 61 USPQ 2d 1164 (TTAB 2001) and Coach Services, Inc. v. Triumph Learning LLC, 96 USPQ 2d 1600 (TTAB 2010), aff’d – USPQ – (Fed. Cir., 2/21/12). Here, however, the evidence noted above led the Board to conclude that BLACKBERRY was a “household name” and, therefore, famous by the time applicant began filing its applications in late 2006.

In determining whether CRACKBERRY was likely to cause “dilution by blurring,” the Board relied heavily on the actual association between the two marks, which pre-existed the adoption of the CRACKBERRY mark by Defining Presence. By 2005, the “CrackBerry” moniker for RIM’s products was already well known to the public as a shorthand way of describing users’ addiction to the device. The Board found that applicants had intentionally chosen the mark because of this prior existing association; the president of Defining Presence admitted as much. On this record, the Board had no trouble finding that a “strong association” between BLACKBERRY and CRACKBERRY existed well prior to Defining Presence’s adoption of the latter mark.

Finally, the Board returned to the parody defense in the context of the dilution claim. Preliminarily, the Board noted that the statutory safe harbor for parody in Section 43(c)(3) of the Lanham Act, 15 U.S.C. §1125(c)(3), was not applicable because Defining Presence sought to register the mark as a “designation of source,” i.e., as a trademark.

The Board went on to dismiss Defining Presence’s reliance on the Chewy Vuiton case, which sustained a parody defense where the mark was used on dog toys. Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007). First, said the Board, the public itself adopted the “CrackBerry” nickname, and therefore its adoption did not reflect any attempt by applicant to parody RIM’s mark. Second, Defining Presence’s marks are used here “for the most part” for services closely related to RIM’s. By contrast, the parody in Chewy Vuiton arose from the juxtaposition of “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.” 507 F.3d at 261 (emphasis in original). The Board did not explain how either of these considerations would justify rejecting the parody defense with respect to clothing in class 25. Nevertheless, it sustained the opposition on dilution grounds with respect to all four applications.

This precedential decision provides a good road map for opposers seeking to rely on the strength of their marks as a basis for preventing registration of non-identical marks for noncompeting goods. Contrary to the assumptions of some in the trademark bar, the Board has not set an unreachable standard for proving a mark “famous” for dilution purposes; this decision shows that a win on dilution grounds is indeed possible. However, unless the mark is a “household name” and appears on one of the recognized lists of famous brands compiled by third parties, the opposer will have an uphill fight. Regardless of the strength of the mark, an applicant’s “parody” defense is likely to fall on deaf ears before the TTAB.

A copy of the decision is available online.