Wednesday, March 7, 2012

Trademark Board denies parody defense in BLACKBERRY v. CRACKBERRY

SAN DIEGO. The Trademark Trial and Appeal Board (TTAB) recently issued a precedential decision in BLACKBERRY trademark holder’s opposition to registration of the mark CRACKBERRY for various marketing services, computer services, electronic bulletin boards, chat rooms, and apparel items. The TTAB refused to register the CRACKBERRY mark for all of its goods and services except apparel because of the likelihood of confusion and for all of CRACKBERRY’s goods and services based on dilution. The TTAB rejected a parody defense to both the likelihood of confusion and dilution claims.

Likelihood of Confusion

The TTAB found, under the In re E.I. DuPont DeNemours & Co. (1973) test, that a likelihood of confusion between CRACKBERRY and BLACKBERRY exists for all of the parties’ goods and services due to the fame of the BLACKBERRY mark; the similarities between the marks; the relatedness of the respective goods and services; and the overlap in the parties' channels of trade.

Bad Parody

Parody could sometimes be a valid defense to both the likelihood of confusion and dilution claims, but in this case the TTAB rejected the parody defense in both contexts.

The TTAB noted that First Amendment considerations are not as strong in the proceedings to register a trademark as they are in the right to merely use a trademark. The Board noted that “[t]he center of balance changes even further when the risk of confusion of source, affiliation, approval, or endorsement by the source of the known expression outweighs the newcomer's claim to the right to adopt and register a humorous moniker.” Therefore, likelihood of consumer confusion was held to be a dominant factor over the First Amendment rights, similar to STARBUCKS v LESSBUCKS for coffee and CLOSE ENCOUNTERS OF THE THIRD KIND (T-shirts) v CLOTHES ENCOUNTERS (clothing).