Research in Motion Limitedv.Defining Presence Marketing Group, Inc. and Axel Ltd. Co.

Trademark Trial and Appeal Board

Feb 27, 2012

No. 91179490 (T.T.A.B. Feb. 27, 2012)

Mailed:
February 27, 2012
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

Research in Motion Limited
v.
Defining Presence Marketing Group, Inc. and Axel Ltd. Co.
________

Opposition Nos. 91178668, 91179490 & 91181076
against Serial Nos. 77059205, 77059214, 77059232 & 77179267
_______

Jeffrey J. Morgan, William R. Towns and Monica M. Moussighi
of Novak Druce + Quigg LLP for Research in Motion Limited.

Matthew W. Swyers of The Swyers Law Firm PLLC for Defining
Presence Marketing Group, Inc. and Axel Ltd. Co.1
_______

Before Bucher, Zervas and Ritchie, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Defining Presence Marketing Group, Inc. (DPMG) filed
four separate applications for registration on the Principal
Register of the mark CRACKBERRY (in standard character
format) for goods and services described as follows:
“marketing services, namely providing
informational web pages designed to generate sales

1 All four of these applications were assigned from Defining
Presence Marketing Group, Inc., a Canadian corporation, to Axel
Ltd. Co., a Florida limited liability corporation, as of
September 7, 2007, recorded in the United States Patent and
Trademark Office Assignment Division at Reel 3617, Frame 0992.
The Board joined Axel as a party defendant in an order dated
February 12, 2008. We refer to both defendants as “applicants.”
THIS OPINION IS A
PRECEDENT OF THE TTAB
Opposition Nos. 91178668, 91179490 & 91181076
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traffic via hyperlinks to other websites; online
retail store services featuring downloadable ring
tones; online retail store services featuring
consumer electronics and telecommunication
products and accessories; providing online
directory information services also featuring
hyperlinks to other websites” in International
Class 35;2
“computer services, namely, creating an online
community for registered users to participate in
competitions, showcase their skills, get feedback
from their peers, form virtual communities, engage
in social networking and improve their talent;
computer services, namely, redirecting electronic
mail to changed personal electronic address” in
International Class 42;3
“providing online chat rooms and electronic
bulletin boards for transmission of messages among
users in the field of general interest; providing
online chat rooms for transmission of messages
among computer users concerning
telecommunications, mobile telephony, e-mail,
mobile phones, PDAs and wireless communications;
providing general and non-consumer information
online in the field of telecommunications, mobile
telephony, e-mail, mobile phones, PDAs and
wireless communications” in International Class
38;4 and
“headgear, namely, hats and caps; jackets; coats;
dress shirts; polo shirts; shirts; shirts for
suits; sport shirts; sweat shirts; t-shirts;
denims; pants; sweat pants; board shorts; boxer
shorts; shorts; sweat shorts; skirt suits; skirts
and dresses; bathing suits; body suits; dress
suits; jogging suits; boxer briefs; lingerie;

2 Application Serial No. 77059205 was filed on December 7,
2006, based upon DPMG’s allegation of a bona fide intention to
use the mark in commerce, opposed in Opposition No. 91178668.
3 Application Serial No. 77059214 was filed on December 7,
2006, based upon DPMG’s allegation of a bona fide intention to
use the mark in commerce, opposed in Opposition No. 91178668.
4 Application Serial No. 77059232 was filed on December 7,
2006, based upon DPMG’s allegation of a bona fide intention to
use the mark in commerce, opposed in Opposition No 91179490.
Opposition Nos. 91178668, 91179490 & 91181076
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socks; beach shoes; canvas shoes; shoes; gym
shorts” in International Class 25.5
Research in Motion Limited [hereinafter “opposer” or
“RIM”] opposed registration of applicants’ mark in each of
these applications, asserting as its grounds for opposition,
(i) likelihood of confusion, namely that as used in
connection with applicants’ goods and services, the mark so
resembles RIM’s previously used and registered
BLACKBERRY mark as to be likely to cause confusion, to
cause mistake, or to deceive under Trademark Act Section
2(d), 15 U.S.C. § 1052(d); and (ii) dilution, namely, that
applicants’ mark is likely to dilute the distinctive quality
of opposer’s marks under Trademark Act Section 43(c),
15 U.S.C. § 1125(c)(2)(B). Opposer alleges that it has used
its BLACKBERRY marks in connection with “handheld
devices including smart phones and related goods and
services as well as promotional and collateral goods”; and
that its BLACKBERRY marks are famous for RIM’s array of
goods and services, and were famous before any of
applicants’ priority dates. Opposer also pleaded ownership
of several registrations for BLACKBERRY or BLACKBERRY

5 Application Serial No. 77179267 was filed on May 11, 2007,
based upon DPMG’s allegation of a bona fide intention to use the
mark in commerce, opposed in Opposition No 91181076.

Opposition Nos. 91178668, 91179490 & 91181076
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formative marks in its notice of opposition, including
Registration Nos. 2613308, 2672464, 2700671 and 2844339.
Applicants have filed answers denying the salient
allegations of the notices of opposition, and pleaded
affirmative defenses, which defenses were not pursued at
trial. The affirmative defenses are considered waived and
are given no further consideration.
The record includes the pleadings; the files of the
involved applications; opposer’s first notice of reliance
filed on March 9, 2009, which introduced into the record
TARR printouts of a number of opposer’s pleaded
registrations for its BLACKBERRY marks;6 opposer’s second
notice of reliance, also filed on March 9, 2009, which
introduced into the record applicants’ answers and
objections to opposer’s first set of interrogatories;
opposer’s third notice of reliance filed on August 7, 2009,
which introduced into the record printed publications;
opposer’s fourth notice of reliance also filed on August 7,
2009, which introduced into the record the Declaration of
James Yersh, with the attendant exhibits;7 and opposer’s

6 Although opposer also alleged that it has used and
registered marks other than BLACKBERRY that incorporate the
suffix –BERRY, opposer submitted no argument on this point, and
we give it no further consideration.
7 Applicants have stipulated that financial information may be
entered into evidence in the form of the Yersh Declaration.
Opposition Nos. 91178668, 91179490 & 91181076
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testimony deposition of Lee Potter, Director, Brand
Communications for RIM, with the attendant exhibits.
Applicants submitted their notice of reliance on
October 9, 2009, as well as testimony depositions of
applicants’ witnesses, Kevin Michaluk, co-founder and
principal of Defining Presence Marketing Group, Inc., and
Ronald Butters, Ph.D., an expert in the fields of
linguistics, with the attendant exhibits.
The parties entered into a joint stipulation on March
4, 2011.8 The parties have fully briefed the issues still
involved in this litigation.
STANDING
Copies of United States Patent and Trademark Office
records submitted by opposer show that opposer is the owner
of the following valid and subsisting registrations:9
BLACKBERRY for “electronic handheld units for the
wireless receipt and/or transmission of data,
that enable the user to keep track of or
manage personal information; software for the
redirection of messages, global computer
network e-mail, and/or other data to one or

8 The joint stipulation states that “BlackBerry-branded ads
were placed on Applicants’ web site between November 1, 2009 and
February 24, 2011,” that “the ads were not placed directly by
Opposer” but by intermediaries, and that “There is no evidence of
actual confusion from the ads ….”
9 Opposer’s Notice of Reliance #1 filed on March 9, 2009,
included printouts of information from the TARR electronic
database records of the United States Patent and Trademark Office
showing the current title and status of its BLACKBERRY
registrations at that time. TTABVue entry #20.
Opposition Nos. 91178668, 91179490 & 91181076
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more electronic handheld units from a data
store on or associated with a personal
computer or a server; and software for the
synchronization of data between a remote
station or unit and a fixed or remote station
or unit” in International Class 9;10
BLACKBERRY for “e-mail service; wireless data messaging
services, particularly services that enable a
user to send and/or receive messages through
a wireless data network; one-way and two-way
paging services” in International Class 38;11
BLACKBERRY for “electronic handheld units for the
wireless receipt and/or transmission of data
that enable the user to keep track of or
manage personal information and which may
also have the capacity to transmit and
receive voice communications; software for
the redirection of messages, global computer
network e-mail, and other data to one or more
electronic handheld units from a data store
on or associated with a personal computer or
a server; software for the synchronization of
data between a remote station or unit and a
fixed or remote station or unit and software
which enables and provides one-way and two-
way wireless connectivity to data, including
corporate data” in International Class 9;
“e-mail service; wireless data messaging
services, particularly services that enable a
user to send and/or receive messages through
a wireless data network; one-way and two-way
paging services; transmission and reception
of voice communication services; consultation
on the topics of developing and integrating
one-way or two-way wireless connectivity to
data, including corporate data, and/or
communications” in International Class 38;
“educational services, namely, classes,
seminars and conferences for the purpose of
providing information to third parties to
assist them in developing and integrating
one-way or two-way wireless connectivity to

10 Registration No. 2672464 issued on January 7, 2003; Section
8 affidavit accepted.
11 Registration No. 2700671 issued on March 25, 2003; Section 8
affidavit accepted.
Opposition Nos. 91178668, 91179490 & 91181076
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data, including corporate data, and voice
communications” in International Class 41;12
BLACKBERRY
CONNECTION
for “newsletter relating to internet e-mail
services and wireless data messaging services
and voice communication services and
technical support services for hardware and
software for wireless data network services
and voice communication services” in
International Class 16;13

for “electronic handheld units and
accessories therefore , namely, batteries,
cases, battery chargers, holsters and
antennas, for the wireless receipt and/or
transmission of data and which may also have
the capability to transmit and receive voice
communications, namely handheld computers and
personal digital assistants; computer
communications software for the transmission
and/or reception of messages, global computer
network e-mail, and/or other data between one
or more electronic handheld units and a data
store on or associated with a personal
computer or a server; computer communication
software for the synchronization of data
between a remote station or unit and a fixed
or remote station or unit and software which
enables and provides one-way and/or two-way
wireless connectivity to data, including
corporate data” in International Class 9;
“e-mail service; wireless data messaging
services, particularly services that enable a
user to send and/or receive messages through
a wireless data network; one-way and two-way
paging services; transmission and reception
of voice communication services” in
International Class 38; and
“consulting and educational services namely,
classes, seminars and conferences for the
purpose of providing information to third
parties to assist them in developing and
integrating one way or two way wireless
connectivity to data, including corporate
data, and/or voice communications” in
International Class 41.14

12 Registration No. 2844340 issued on May 25, 2004; Section 8
affidavit accepted and Section 15 affidavit acknowledged.
13 Registration No. 3098588 issued on May 30, 2006.
14 Registration No. 3102687 issued on June 13, 2006.
Opposition Nos. 91178668, 91179490 & 91181076
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Having established it is the owner of these
registrations and that they are valid and subsisting,
opposer has established its standing to oppose applicants’
applications.
PRIORITY
As to opposer’s allegations of likelihood of confusion,
due to opposer’s registered marks for the goods identified
in International Classes 9 and 16, and opposer’s services
recited in International Classes 38 and 41, opposer’s
priority as to these goods and services is not in issue.
King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974).
LIKELIHOOD OF CONFUSION
Parody/Fair Use defense to finding of Likelihood of Confusion
Applicants assert that they should prevail on the
question of likelihood of confusion inasmuch as their mark
is a parody of opposer’s mark. In some reported
infringement cases from the federal courts, a successful
parody seems to make confusion less likely. See Hormel
Foods Corp. v. Jim Henson Productions Inc., 73 F.3d 497,
37 USPQ2d 1516, 1519-22 (2d Cir. 1996) [Henson’s use of
“Spa'am” on merchandise for its “Muppet” movie is not likely
Opposition Nos. 91178668, 91179490 & 91181076
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to cause confusion with Hormel’s SPAM mark for luncheon
meat]. Furthermore, when federal courts are dealing with
questions of alleged infringement, the protective penumbra
of free speech may well support the premise that members of
the public have a right to use words in the English language
to interest and amuse other persons. However, when this
Board is asked the narrower question of applicants’ right to
registration under Section 2(d) of the Lanham Act, the First
Amendment claim is not as strong as with issues of restraint
on use. The 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. Especially if we should find under the
du Pont factors that the respective goods and services are
not readily distinguishable, that they might be targeted to
the same consumers through overlapping trade channels, and
in the event that prospective purchasers of applicants’
goods and services might well believe that both parties’
goods and services come from the same source, then the
likelihood of confusion will usually trump any First
Amendment concerns. See Starbucks U.S. Brands, LLC and
Starbucks Corporation D.B.A. Starbucks Coffee Company v.
Marshall S. Ruben, 78 USPQ2d 1741, 1754 (TTAB 2006)
Opposition Nos. 91178668, 91179490 & 91181076
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[STARBUCKS versus LESSBUCKS for coffee]; and Columbia
Pictures Industries, Inc. v. Miller, 211 USPQ 816, 820 (TTAB
1981) [CLOSE ENCOUNTERS OF THE THIRD KIND for T-shirts versus
CLOTHES ENCOUNTERS for items of clothing].
The du Pont Factors
Accordingly, we turn to a consideration of the question
of likelihood of confusion. Our determination of likelihood
of confusion is based upon our analysis of all of the
probative facts in evidence that are relevant to the factors
bearing on this issue. See In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
The salient question to be determined is whether there
is a likelihood that the relevant purchasing public will be
misled to believe that the goods and/or services offered
under the involved marks originate from a common source.
See J.C. Hall Company v. Hallmark Cards, Incorporated,
340 F.2d 960, 144 USPQ 435 (CCPA 1965); and The State
Historical Society of Wisconsin v. Ringling Bros.-Barnum &
Bailey Combined Shows, Inc., 190 USPQ 25 (TTAB 1976).
Opposer must establish by a preponderance of the evidence
that there is a likelihood of confusion. Crash Dummy Movie
LLC v. Mattel Inc., 601 F.3d 1387, 94 USPQ2d 1315, 1316
Opposition Nos. 91178668, 91179490 & 91181076
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(Fed. Cir. 2010). The relevant du Pont factors in the
proceeding now before us are discussed below.
Fame of Opposer's Mark
In January 1999, at the time of its adoption and first
use, opposer’s BLACKBERRY mark was and continues to be
clearly arbitrary as applied to its goods and services, and
from the outset was entitled to protection as a source
indicator. A decade later, by the time of the current
trial, opposer argues that whether one looks to metrics like
the volume of sales, extensive promotional and advertising
expenditures, the length of use of the BLACKBERRY mark,
the role of this historically-significant device in shaping
the culture and technology of the early twenty-first
century, and/or evidence of widespread media attention, the
BLACKBERRY mark has become famous and well known.15
The fame of a mark, if it exists, “plays a ‘dominant
role’ in the process of balancing the du Pont factors.”
Recot Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897
(Fed. Cir. 2000). Because of the extreme deference that is
accorded to a famous mark in terms of the wide latitude of

15 See opposer’s Notice of Reliance #1, exhibits 1-3, 8-11;
Potter trial deposition at 13-14, 38-45, and exhibits 25, 31-33;
Notice of Reliance #3, PP0002-11, PP00017, PP00021, PP00028 and
PP00032; Butters Trial Deposition at 29; and Notice of Reliance
#4, Yersh Declaration at ¶5.
Opposition Nos. 91178668, 91179490 & 91181076
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legal protection it receives, and the dominant role fame
plays in the likelihood of confusion analysis, it is the
duty of a party asserting that its mark is famous to prove
it definitively. Leading Jewelers Guild Inc. v. LJOW
Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB 2007).
Although the actual numbers are confidential, RIM has
sold billions of dollars worth of BLACKBERRY branded
products and services in the United States since 1999,
reaching an ever-increasing number of millions of consumers
in the United States each year through fiscal year 2009,16
based in part upon RIM having spent many tens of millions of
dollars on advertising and promotion. These promotional
efforts have included print advertising, television and
radio advertisements, signage, billboards, banners,
brochures and other printed materials, as well as Internet
websites. The record also demonstrates how unsolicited
media coverage has added to the renown of the BLACKBERRY
mark. Over the past decade, BLACKBERRY has repeatedly
been ranked among the most famous and valuable trademarks in
the world by industry publications that track the powerful
reach of global brands.17 We are convinced by reliable

16 Based on ¶ 5 of the Declaration of James Yersh, Vice
President and Controller of RIM, as of August 3, 2009.
17 See testimony of Lee Potter as well as opposer’s related
Exhibit # 31, Interbrand’s “Best Global Brands 2008,” submitted
with, Bates No. RIM009602, TTABVue Entry #54 at 153 of 291;
Opposition Nos. 91178668, 91179490 & 91181076
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evidence that the BLACKBERRY trademark has been the
subject of intense media attention. See Coach Services Inc.
v. Triumph Learning LLC, 96 USPQ2d 1600, 1610 (TTAB 2010),
quoting Toro Co. v. ToroHead Inc., 61 USPQ2d 1164, 1180-81
(TTAB 2001) [“ … examples of evidence to show the
transformation of a term into a truly famous mark include …
intense media attention … ”]. As seen above, opposer
markets its goods and services in a wide variety of media,
all targeted to the general public. Moreover, opposer has
submitted representative figures of annual sales and
advertising expenditures for the United States in the decade
of 1999 to 2009, and especially 2004 to 2009. By mid-
decade, BLACKBERRY products had became ubiquitous in the
United States, and proved to be an important tool for
business executives, government officials and many other
professionals as a means for round-the-clock mobile
communications. Accordingly, we find that the term
BLACKBERRY is famous for handheld devices such as smart

Exhibit # 32, MillwardBrown Optimor’s “Top 100 Most Powerful
Brands ’08,” Bates Nos. RIM009520 and RIM009533, TTABVue Entry
#54 at 189, 202 of 291; and Exhibit # 33, MillwardBrown Optimor’s
“Top 100 Most Powerful Brands ’09,” Bates Nos. RIM009549,
RIM009554, RIM009556 & RIM009573, TTABVue Entry #54 at 218, 223,
225 & 242 of 291; Exhibit # 34, Bates Nos. RIM009636 & RIM009638,
TTABVue Entry #54 at 259 & 261 of 291; and “Making It Big -- Not
many cult brands evolve into national labels.” Herewith, a
select few that did. By Eileen Glanton,
http://www.forbes.com/forbes/2001/0416/198b.html.

Opposition Nos. 91178668, 91179490 & 91181076
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phones and closely-related information technology services,
such as paging services, email service, wireless data
messaging services, transmission and reception of voice
communication services, and computer-related consulting and
educational services.
Similarities of the marks
We turn then to the du Pont factor dealing with the
similarity or dissimilarity of the marks in their entireties
as to appearance, sound, connotation and commercial
impression. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005). The test under this du Pont
factor is whether the marks are sufficiently similar that
confusion as to the source of the goods and/or services
offered under the respective marks is likely to result.
Both marks contain an unbroken string of ten letters
broken into three syllables. Additionally, but for the
first two letters, all the rest of the letters are
identical. Despite this difference in the first two
letters, we find that the similarities in appearance
outweigh the differences. As to the aural similarities,
while it has often been said that there is no “correct” way
to pronounce a mark which is not an ordinary English-
language word (such as applicants’), the stress and cadence
Opposition Nos. 91178668, 91179490 & 91181076
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of the marks could be, and almost surely are, identical.
With only a difference of two letters, applicants’ own
expert linguist, Dr. Butters, agrees that “there is
certainly undeniable phonological similarity between
BlackBerry and Crackberry. They sound alike ….”18 The first
syllables of the respective marks (“black” and “crack”) are
undeniably similar in sound, and the balance of each mark is
the identical word, “-berry.” Hence, we agree with
applicants’ expert that these marks have a similar sound.19
As to the connotations of these two marks, the record
shows that the public at large initially adopted the
nickname “CrackBerry,” alluding to the widely-held view that
users of BLACKBERRY wireless handheld devices often appear
to be addicted to their device.20 The record shows that at
least by 2005, the popular BLACKBERRY device had kicked-
off a revolution in the United States – both technological
and cultural.21 The “CrackBerry” moniker for BLACKBERRY

18 Butters Trial Deposition at 51-52.
19 Generally we find it unnecessary to rely upon linguistics
experts to tell us how marks are pronounced. Plyboo America Inc.
v. Smith & Fong Co., 51 USPQ2d 1633 (TTAB 1999); Fisons Limited
v. UAD Laboratories, Inc., 219 USPQ 661 (TTAB 1983); and The
Mennen Company v. Yamanouchi Pharmaceutical Co., Ltd. 203 USPQ
302, 305, (TTAB 1979). However, in this case, Dr. Butters was
called by applicants to testify about the origins of the
“Crackberry” term, and he then offered the quoted testimony
concerning the aural similarities of the respective marks during
cross-examination.
20 Michaluk Trial deposition at 65-69.
21 Potter Trial Deposition at 38-45.
Opposition Nos. 91178668, 91179490 & 91181076
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branded products was selected as “Word of the Year” in
2006.22 In short, because opposer’s BLACKBERRY devices
were widely referred to by the nickname, “CrackBerry,” prior
to applicants’ adoption of this mark, the two terms already
had developed similar connotations.
As to commercial impressions, all of the evidence in
the record, including the testimony of applicants’ own
witnesses, supports the conclusion that there is a strong
association among members of the relevant public between
these two terms in the field of wireless handheld devices.
The fact that consumers and members of the public informally
refer to BLACKBERRY devices by the “CrackBerry” moniker
lends further support to our finding similar commercial
impressions for both marks.
Accordingly, for purposes of this element, we find that
the two involved marks are highly similar, and that this
critical du Pont factor favors a finding of likelihood of
confusion, particularly in light of the fame of the
Blackberry mark:
In a correct assessment of the du Pont
factors, the fame of PLAY-DOH should have
magnified the significance of these
similarities [in the marks].

22 Webster’s New World Dictionary (2006); see also Butters
trial deposition at 23-24.
Opposition Nos. 91178668, 91179490 & 91181076
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Kenner Parker Toys Inc. v. Rose Arts Industries, Inc.,
963 F.2d 350, 22 USPQ2d 1453, 1457 (Fed. Cir. 1992). Thus,
a potential consumer who is aware of opposer’s famous mark
is even more likely to be attuned to its similarity to
applicants’ mark upon encountering the latter.
Goods and services
Our inquiry into this du Pont factor is whether the
goods and/or services are so related such that a consumer
may believe the marks indicate that the goods and/or
services emanate from a single source. See On-line Careline
Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471
(Fed. Cir. 2000); In re Martin's Famous Pastry Shoppe, Inc.,
748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); and In re
Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001). As to the
parties’ respective goods and services, the evidence shows
that opposer’s marks are registered in connection with hand-
held wireless devices, software, newsletters, and related
telecommunications, consulting and educational services.
Applicants are seeking registration for online retail store
services featuring consumer electronics and
telecommunication products and accessories, marketing
services, an array of telecommunications, social media and
Internet services, as well as a long listing of goods in
International Class 25, namely items of clothing.
Opposition Nos. 91178668, 91179490 & 91181076
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Applicants argue that opposer’s registered marks are
primarily in the field of hand-held wireless devices,
software, and services essential to supporting these
devices. By contrast, applicants take the position that
they use their mark in connection with providing online chat
rooms for users of opposer’s devices as well as an online
retail store service for wireless device accessories.
Hence, applicants argue that there is no overlap between the
goods and services of the parties. Furthermore, applicants
argue that to the extent opposer’s additional services have
moved closer to applicants’ core services, that as to these
newer services, applicants actually maintain priority of use
over opposer.
However, it is not necessary that the goods and
services overlap in order to be found to be related in such
a way that confusion is likely. For example, we find that
applicants’ “online retail store services featuring consumer
electronics and telecommunications products … ” are quite
closely related to opposer’s electronic handheld
communication and data devices in International Class 9.
“[T]here is no question that store services and the goods
which may be sold in that store are related goods and
services for the purpose of determining likelihood of
confusion.” In re Peebles, Inc., 23 USPQ2d 1795, 1796 (TTAB
Opposition Nos. 91178668, 91179490 & 91181076
- 19 -
1992), citing In re Best Products Co., Inc., 23 USPQ2d 988,
989 (TTAB 1988).
Moreover, we are constrained to consider applicants’
entire listing of goods and services as presented, and they
are much broader than “online chat rooms” and “online retail
store service for wireless device accessories,” as argued by
applicants. Rather, we agree with opposer that applicants’
recited services are closely related, if not, in some
respects, legally identical, to opposer’s broadly-stated
goods and services, and this critical du Pont factor favors
sustaining the oppositions. Likelihood of confusion must be
found if there is likely to be confusion with respect to any
item that comes within the identification of goods in the
application. See Tuxedo Monopoly, Inc. v. General Mills Fun
Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). For
example, applicants’ online services in International Class
38 appear to be virtually identical to opposer’s registered
services in International Class 38, i.e., services providing
information that enable a user to employ wireless
communications networks. Similarly, applicants’ computer
services of “redirecting electronic mail to changed personal
electronic address” are closely related to opposer’s
services making possible the sending, receiving and
synchronizing messages in a wireless environment.
Applicants’ website contains blogs, tips, discussion forums,
Opposition Nos. 91178668, 91179490 & 91181076
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wallpaper, accessories and software, all using the
BlackBerry mark as if their own source identifier:

Based on this evidence, we find a close relationship
between opposer’s registered goods and services and
applicants’ recited services, such as online retail store
services, telecommunications, computer and educational
services.
Accordingly, as to the services recited in application
Serial Nos. 77059205, 77059214 [Opposition No. 91178668] and
77059232 [Opposition No. 91179490], we find this du Pont
factor strongly supports the position of opposer.
On the other hand, opposer claims common-law rights in
BLACKBERRY for use on items of clothing. Such goods are
Opposition Nos. 91178668, 91179490 & 91181076
- 21 -
not covered by any of opposer’s registrations. In addition
to the fact that the record does not demonstrate that
opposer’s goods and services are related to applicants’
items of clothing, we cannot be sure when opposer’s use
commenced because the record does not contain evidence that
such usage was undertaken prior to applicants’ International
Class 25 filing date.23 Accordingly, as to Opposition No.
9118076 to application Serial No. 77179267, we find that
this du Pont factor does not support the position of
opposer.
Channels of Trade
As to trade channels, applicants argue that they
operate in different channels of trade from those of
opposer. However, we have to assume that the respective
services will be rendered in all appropriate trade channels
for such services, and we find ample evidence that all of
these types of services are available through some of the
same channels of trade.

23 To the extent that opposer relies on its common law rights,
it must prove its priority by competent evidence. We find under
the rule of Otto Roth & Co. v. Universal Food Corp., 640
F.2d 1317, 209 USPQ 40, 43 (CCPA 1981), that opposer cannot
prevail unless its designation is, or has become, distinctive of
its goods prior to the earliest date that respondent can rely
upon, namely, the application filing date for her involved
registration. Towers v. Advent Software Inc., 913 F.2d 942,
16 USPQ2d 1039, 1041 (Fed. Cir. 1990).
Opposition Nos. 91178668, 91179490 & 91181076
- 22 -
Furthermore, applicants admit that they cater to the
needs of users of opposer’s BLACKBERRY-brand products and
services, and designed their website to appeal to
BLACKBERRY enthusiasts by providing content related to
BLACKBERRY branded products, applications and accessories,
and that their website was a preferred site for BLACKBERRY
device owners when they experienced difficulties with their
devices. Accordingly, opposer highlights the contradictory
nature of applicants’ arguments as to trade channels:
“ … Applicants simply cannot have it both
ways. They cannot argue on the one hand that
they operate one of the most popular websites
[in the world] dedicated to BLACKBERRY
owners … which provides BLACKBERRY related
goods and services and at the same time claim
that there is no overlap or similarity in
channels of trade. Given the large number of
channels in which BLACKERRY products and
services are sold and the large audience of
the CRACKBERRY website which is specifically
targeted to BLACKBERRY enthusiasts, it is
clear that the same consumers are
encountering both marks in the marketplace.”24

We agree with opposer’s contention and find that there
is a large overlap in the respective trade channels of
opposer’s registered goods and services and those of
applicants’ applied-for services. In fact, more than merely
overlapping trade channels, it seems that applicants’
marketing specifically targets opposer’s actual customers,

24 Opposer’s rebuttal brief at 20.
Opposition Nos. 91178668, 91179490 & 91181076
- 23 -
explicitly referring to opposer and to opposer’s marks.
More than a mere overlap in possible customers, applicants’
prospective customers are by design substantially all prior
customers of opposer.
Conclusion on Likelihood of Confusion
We conclude, based upon a preponderance of the
evidence, after carefully weighing all the relevant du Pont
factors, and particularly in view of the strength and fame
of opposer’s BLACKBERRY mark, the similarities between the
marks, the relatedness of the respective goods and services
as identified in the listings of goods and services, and
their channels of trade, that there is a likelihood of
confusion when applicants’ CRACKBERRY mark is used in
connection with the services recited in application Serial
Nos. 77059205, 77059214 [Opposition No. 91178668] and
77059232 [Opposition No. 91179490]. Certainly, the fact
that consumers and members of the public informally refer to
BLACKBERRY devices by the “CrackBerry” moniker lends
further support to our ultimate conclusion on a likelihood
of confusion. To the extent that we have considered any
other of the relevant du Pont factors not otherwise
mentioned, we consider them to be neutral. Accordingly, we
Opposition Nos. 91178668, 91179490 & 91181076
- 24 -
sustain these oppositions on the basis of likelihood of
confusion.
On the other hand, as to Opposition No. 91181076 to
application Serial No. 77179267 involving the International
Class 25 goods, we dismiss this opposition in the absence of
a showing of a relationship between applicants’ goods and
the goods and services for which opposer has priority.
DILUTION BY BLURRING
When an application to register a mark is challenged on
grounds of dilution under Section 43(c) of the Act,
15 U.S.C. § 1125(c),25 we look to the following elements:

25 (c) Dilution by blurring; dilution by tarnishment
(1) Injunctive relief -- Subject to the principles of equity, the owner of a
famous mark that is distinctive, inherently or through acquired
distinctiveness, shall be entitled to an injunction against another person
who, at any time after the owner's mark has become famous, commences use of a
mark or trade name in commerce that is likely to cause dilution by blurring
or dilution by tarnishment of the famous mark, regardless of the presence or
absence of actual or likely confusion, of competition, or of actual economic
injury.
(2) Definitions
(A) For purposes of paragraph (1), a mark is famous if it is widely
recognized by the general consuming public of the United States as a
designation of source of the goods or services of the mark's owner. In
determining whether a mark possesses the requisite degree of recognition,
the court may consider all relevant factors, including the following:
(i) The duration, extent, and geographic reach of advertising and publicity
of the mark, whether advertised or publicized by the owner or third parties.
(ii) The amount, volume, and geographic extent of sales of goods or
services offered under the mark.
(iii) The extent of actual recognition of the mark.
(iv) Whether the mark was registered under the Act of March 3, 1881, or the
Act of February 20, 1905, or on the principal register.
(B) For purposes of paragraph (1), “dilution by blurring” is association
arising from the similarity between a mark or trade name and a famous mark
that impairs the distinctiveness of the famous mark. In determining whether
a mark or trade name is likely to cause dilution by blurring, the court may
consider all relevant factors, including the following:
(i) The degree of similarity between the mark or trade name and the famous
mark.
(ii) The degree of inherent or acquired distinctiveness of the famous mark.
Opposition Nos. 91178668, 91179490 & 91181076
- 25 -
(1) whether the opposer’s mark is famous; (2) whether the
opposer’s mark became famous prior to the date of the
application to register the applicants’ mark; and (3)
whether the applicants’ mark is likely to blur the
distinctiveness of the opposer’s famous mark.
A. Is the term BLACKBERRY famous?

As noted above in our discussion of likelihood of
confusion, we are convinced that the BLACKBERRY mark is
famous based upon the ground breaking role of this device in
shaping the culture and technology of the early twenty-first
century, the incredible volume of sales, opposer’s extensive
promotional and advertising expenditures within the United
States, and evidence of widespread media attention.
We are mindful of the fact that a higher standard of
fame is required in the analysis of likelihood of dilution
than is the case with fame in terms of likelihood of
confusion. See Toro Co. v. ToroHead Inc., 61 USPQ2d 1164,
1170 (TTAB 2001). Nonetheless, we find that the BLACKBERRY
mark attained the levels of renown for which the dilution
section of the statute was enacted. We find based on this

(iii) The extent to which the owner of the famous mark is engaging in
substantially exclusive use of the mark.
(iv) The degree of recognition of the famous mark.
(v) Whether the user of the mark or trade name intended to create an
association with the famous mark.
(vi) Any actual association between the mark or trade name and
the famous mark.

Opposition Nos. 91178668, 91179490 & 91181076
- 26 -
extensive record that BLACKBERRY should be ranked among the
most famous and valuable trademarks in the world. See p.
12, Fn 17, supra.
Opposer’s consistent history and tremendous volume of
U.S. advertising and sales figures, coupled with the
additional factors discussed above, supports the finding
that BLACKBERRY has become a “household name” and is famous
for dilution purposes. See Thane International, Inc. v.
Trek Bicycle Corp., 305 F.3d 894, 64 USPQ2d 1564, 1575 (9th
Cir. 2002) [“the transformation of a term into a truly
famous mark” means that “the mark must be a household
name.”]. In fact, in their brief, applicants seem prepared
to concede this point:
In the instant case, … BlackBerry is a famous
mark in relation to the goods and services in
Opposer’s pleaded registrations.

Applicants’ brief at 33.
In view of the foregoing, we find the BLACKBERRY mark
to be famous for purposes of this element of the likelihood
of dilution analysis.
B. Was the BLACKBERRY mark famous before applicants’
filing date?

Applicants’ involved intent-to-use applications were
filed with the United States Patent and Trademark Office
between December 2006 and May 2007. As noted supra, the
record shows that between 1999 and 2005, the opposer’s
Opposition Nos. 91178668, 91179490 & 91181076
- 27 -
BLACKBERRY-branded goods had kicked-off a technology
revolution in the United States, that the BLACKBERRY mark
is indeed famous, and that this fame was established before
the filing dates of the affected applications, or any other
date that applicants may be able to claim. Hence, we find
that the BLACKBERRY mark was famous before applicants’
filing dates.
C. Is applicants’ mark CRACKBERRY likely to blur the
distinctiveness of the opposer’s BLACKBERRY mark?

Dilution by blurring is an association arising
from the similarity between a mark or trade name and a
famous mark that impairs the distinctiveness of the
famous mark. Trademark Dilution Revision Act of 2005,
15 U.S.C. § 1125(c)(2)(B) [TDRA]. Over time, the
gradual whittling away of distinctiveness will cause
the trademark holder to suffer “death by a thousand
cuts.”26 Accordingly, we consider the statutory, non-
exclusive factors for determining the likelihood of
blurring in a dilution case set out by the TDRA.

26 See National Pork Board v. Supreme Lobster and Seafood Co.,
96 USPQ2d 1479, 1497 (TTAB 2010)(citing Barton Beebe, “A Defense
of the New Federal Trademark Antidilution Law,” 16 FORDHAM INTELL.
PROP. MEDIA & ENT. L.J. 1143, 1163 (2006)).

Opposition Nos. 91178668, 91179490 & 91181076
- 28 -
The degree of similarity between the mark or trade name and the famous
mark.
One of the questions in a dilution case is whether the
two involved marks are sufficiently similar to trigger
consumers to conjure up a famous mark when confronted with
the second mark. It is not necessary that the marks be
substantially identical. Rather, for purposes of this
element, it is sufficient that the terms be highly similar.
UMG Recordings Inc. v. Mattel Inc., 100 USPQ2d 1868, 1888
(TTAB 2011) [MOTOWN versus MOTOWN METAL] and Nike Inc. v.
Maher, 100 USPQ2d 1018 (TTAB 2011) [JUST DO IT versus
Just Jesu it].
While we are not conducting a Section 2(d) likelihood
of confusion analysis under this factor of dilution by
blurring, we still consider the degree of similarity or
dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression.
See also UMG Recordings Inc. 100 USPQ2d at 1888; Coach
Services Inc. v. Triumph Learning LLC, 96 USPQ2d 1600, 1613
(TTAB 2010); and National Pork Board, 96 USPQ2d at 1497
(TTAB 2010).
In connection with our Section 2(d) analysis, we have
already found it significant that the public at large
initially adopted the nickname “CrackBerry” for BLACKBERRY
wireless handheld devices. That is, prior to the filing of
Opposition Nos. 91178668, 91179490 & 91181076
- 29 -
the involved applications, the “CrackBerry” moniker for
BLACKBERRY branded products had already achieved
dictionary status as a slang term dating to the year 2000,27
and had then been selected “Word of the Year” (2006) by the
staff of Webster’s New World Dictionary.28
We found above in our likelihood of confusion
discussion that applicants’ mark, upon adoption, carried
with it a connotation and commercial impression most similar
to that of opposer’s famous mark in the field of wireless
handheld devices. Hence, as to this factor of the
likelihood of dilution, we find that there is a high degree
of similarity between applicants’ mark and opposer’s famous
mark. As noted earlier, applicants have conceded this
factor in connection with their parody defense.
In the instant case, the first four elements
are truly not in dispute. The term
CRACKBERRY is a nickname for the BlackBerry
device and because of the same some
similarities between the marks exist. It is
conceded that BlackBerry is inherently
distinctive for the goods and services in
Opposer’s pleaded registrations and that the
global brand value for the BlackBerry
trademark in conjunction with the Opposer’s
submission of evidence of their marketing
efforts and expenditures on advertising is
sufficient to establish that BlackBerry is a
famous mark in relation to the goods and
services in Opposer’s pleaded registrations.

Applicants’ brief at 33.

27 Butters trial deposition at 23-24.
28 Id.
Opposition Nos. 91178668, 91179490 & 91181076
- 30 -
The degree of distinctiveness of the famous mark.
As noted above,applicants have conceded that the term
BLACKBERRY is inherently distinctive as applied to
opposer’s devices, and there is no evidence that it is weak
in any other respect. We find it to be distinctive, and
resolve this element in opposer’s favor.
The extent to which the owner of the famous mark is engaging in substantially
exclusive use of the mark.
There is nothing in this record which contradicts
opposer’s position that its use of the BLACKBERRY mark is
virtually exclusive in this field. Opposer has shown that
it has used the mark extensively for more than a decade, and
applicants have not shown that there are any third-party
uses. In fact, there is no evidence in this record of any
actual use in commerce, at the time applicants filed their
applications for a federal trademark registration or since,
of the same or highly similar marks, on any goods or
services, and certainly not of goods or services that are
related to wireless handheld devices. Accordingly,
opposer’s exclusivity of use of this mark also supports the
conclusion that dilution by blurring is likely.29

29 Again, we note that applicants have essentially conceded
this factor in connection with their parody defense. Applicants’
brief at 33.
Opposition Nos. 91178668, 91179490 & 91181076
- 31 -
The degree of recognition of the famous mark.
The fourth listed statutory factor for the blurring
analysis requires us to assess just how well-recognized is
opposer’s mark. The evidence opposer has placed into this
record is extensive. The preponderance of this evidence
convinces us that between 1999 and 2004 the BLACKBERRY
mark became one of the most prominent marks in our digital,
wireless culture. Although the actual numbers are
confidential, opposer has spent huge sums of money
advertising and promoting its BLACKBERRY mark in the
United States. We also find especially compelling the
billions of dollars worth of BLACKBERRY branded products
and services sold at retail in the United States to tens of
millions of consumers in the United States over the past
dozen years. Furthermore, we have already found that
BLACKBERRY should be ranked among the most famous and
valuable trademarks in the world. See pp. 12-14, supra.30
Whether the user of the mark intended to create an association with the
famous mark.
We agree with opposer that the evidence of record very
clearly supports the conclusion that applicants intended to
create an association with RIM’s famous BLACKBERRY mark in

30 Again, we note that applicants have essentially conceded
this factor in connection with their parody defense. Applicants’
brief at 33.
Opposition Nos. 91178668, 91179490 & 91181076
- 32 -
choosing to adopt CRACKBERRY as their source indicator.
Several of applicants’ services are closely related to the
goods and services recited in RIM’s registrations. As seen
earlier, the purpose of applicants’ online services is to
provide a forum for BLACKBERRY users, and they provided
advice on using (and abusing) the device. The record
demonstrates that consumers were well acquainted with
BLACKBERRY devices, and the degree to which the media had
amplified the cultural buzz that had built up around them.
Indeed, it is significant to our findings on this factor
that applicants’ corporate representative, Kevin Michaluk,
confirmed that applicants chose this term precisely because
of its strong association with BLACKBERRY.31 Finally, as
argued by opposer, applicants’ persistent claims of an
attempted parody stands as an admission that applicants
intended to create an association with BlackBerry.
Any actual association between the mark and the famous mark.
In this case, we find that applicants intentionally
chose a designation already strongly associated with the
famous mark of the opposer. Under the circumstances, it is
clear that applicants were well aware of this pre-existing
association at the time they adopted it. The testimony from

31 Michaluk trial deposition at 69.

Opposition Nos. 91178668, 91179490 & 91181076
- 33 -
applicants’ own witnesses confirms that there was such an
association.
As previously noted, the record shows that the public
at large initially adopted the term “CrackBerry,” as a
nickname for opposer’s goods, alluding to the widely-held
view that users of BLACKBERRY wireless handheld devices
often appear to be addicted to their device. The record
shows that at least by 2005, opposer’s BLACKBERRY goods
and services had achieved considerable fame in the United
States due to its technological innovation and the changes
its wireless connectivity made possible. Again, the
“CrackBerry” moniker for BLACKBERRY branded products was
selected as “Word of the Year” in 2006 by the staff of
Webster’s New World Dictionary. All the evidence in the
record, including the testimony of applicants’ own
witnesses, supports the conclusion that there is a strong
association among members of the relevant public between
these two terms in the field of wireless handheld devices
and related services. Hence, we find in this context, that
there existed a strong association between BLACKBERRY and
CRACKBERRY well prior to the date on which applicants
adopted this latter mark as their own.
Opposition Nos. 91178668, 91179490 & 91181076
- 34 -
BALANCING THE FACTORS
Accordingly, after considering the entire record and
the parties’ arguments herein, we find that all six of the
listed statutory factors support the position of opposer
herein, that RIM is likely to suffer impairment of the
distinctiveness of its marks, and hence, opposer has shown a
likelihood of dilution by blurring under Trademark Act
§ 43(c)(2)(B), 15 U.S.C. § 1125(c)(2)(B) as to each of the
applications opposed.
Applicants’ claims of Parody
The arguments that applicants put forward most
zealously in their final brief is that they are attempting
to satirize opposer’s famous mark, using a moniker
admittedly preexisting in the population at large.
Consistent with the argument that their mark is a
protectable parody, applicants have effectively conceded
much of opposer’s case on a likelihood of dilution, as seen
above.
Applicants are correct that parody is explicitly
included as a defense to a claim of dilution under a
statutory “fair use” exclusion in Section 43(c) of the
Lanham Act, 15 U.S.C. § 1125(c)(3)(A):
Opposition Nos. 91178668, 91179490 & 91181076
- 35 -
(3) Exclusions. --The following shall not be
actionable as dilution by blurring or dilution by
tarnishment under this subsection:
(A) Any fair use, including a nominative or
descriptive fair use, or facilitation of such fair
use, of a famous mark by another person other than
as a designation of source for the person's own
goods or services, including use in connection
with--
(i) advertising or promotion that permits
consumers to compare goods or services; or
(ii) identifying and parodying, criticizing, or
commenting upon the famous mark owner or the
goods or services of the famous mark owner.
(B) All forms of news reporting and news
commentary.
(C) Any noncommercial use of a mark.
As emphasized by Professor McCarthy, “The parody safe
harbor is obviously intended to accommodate the interests of
using famous marks in free speech and expression.”32 Yet, as
is the case with substantially all trademark applicants
seeking federal registrations from the United States Patent
and Trademark Office, applicants herein are necessarily
relying upon a claim of using the parody as a designation of
source for its own services (and/or goods). By the very
terms of the statute, applicants’ claimed use as a mark
seems to be precluded from the safe harbor provisions.
Nonetheless, as support for their position that parody
is a form of fair use and is a complete defense, applicants

32 J.T. McCarthy, 4 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION
§ 24:126 (2010).
Opposition Nos. 91178668, 91179490 & 91181076
- 36 -
point to a case from the Fourth Circuit Court of Appeals,
Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC,
507 F.3d 252, 84 USPQ2d 1969 (4th Cir. 2007).33 Applicants
argue from the Louis Vuitton decision that we should impose
on plaintiff/opposer an “increased burden” to demonstrate
that the distinctiveness of its famous mark is likely to be
impaired by this parody. We disagree with this approach.
As opposer argues, based on the Louis Vuitton case, the
safe harbor provision does not extend the fair use defense
to parodies used as a trademark. “Under the statute’s plain
language, parodying a famous mark is protected by the fair
use defense only if the parody is not ‘a designation of
source for the person’s own goods or services.’” Louis
Vuitton, 84 USPQ2d at 1978. See also American Express
Marketing & Development Corp. v. Gilad Development Corp.,
94 USPQ2d 1294, 1298-1300 (TTAB 2010). However, as the
Louis Vuitton decision notes, that observation does not end
the inquiry. Like the Fourth Circuit, the Board will assess

33 In this case, defendants’ CHEWY VUITON mark for pet chew
toys was chosen as a joking reference to plaintiff’s luxury LOUIS
VUITTON handbags. Given the rhyming marks, the trade dress,
etc., the Court found that Haute Diggity Dog intended an
irreverent parody, and that this parody was permitted as a “fair
use” exception to the rule against dilution by blurring.
We note that this case has on occasion come under criticism.
See, e.g., Anthony L. Fletcher, “The Product with the Parody
Trademark: What’s Wrong with CHEWY VUITON?” 100 TRADEMARK REPORTER
1091 at 1142-45 (September-October 2010).

Opposition Nos. 91178668, 91179490 & 91181076
- 37 -
the alleged parody “as part of the circumstances to be
considered for determining whether the [opposer] has made
out a claim for dilution by blurring.” Louis Vuitton,
84 USPQ2d at 1978.
We find the alleged parody does not, in this case,
insulate the applicant from the claim of dilution.
Specifically, we find two factors undercut the effectiveness
of the claimed parody in averting dilution. First, and most
important, the public itself adopted and popularized
“CrackBerry” as a nickname for BLACKBERRY wireless handheld
devices. The name does not solely – if at all – reflect
applicants’ asserted attempt to parody opposer’s marks.
This circumstance alone materially distinguishes this case
from the Louis Vuitton decision. Second, applicants’ use of
“CrackBerry” on services that are for the most part closely
related to opposer’s goods and services significantly
undercuts the effectiveness of the asserted parody in
avoiding dilution by blurring. Indeed, one of the core
reasons that “Chewy Vuiton” was held to be an effective
parody was its “juxtaposition of the similar and the
dissimilar”: 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.” Id. at 1974
(emphases in original); see also Id. at 1979-80.
Opposition Nos. 91178668, 91179490 & 91181076
- 38 -
Accordingly, on this record, we find that applicants’
use of opposer’s “CrackBerry” nickname to market its
services, sell items of clothing, etc., would blur the
distinctiveness of the BLACKBERRY marks, rather than create
a non-source-indicating fair use parody that should be
protectable either under the safe harbor provisions of
Section 43(c)(3)(A) or of the First Amendment.
Therefore, all four of these oppositions are sustained
on the ground that opposer has shown a likelihood of
dilution by blurring under Trademark Act § 43(c)(2)(B).
Decision: The first three of these oppositions are
sustained on the ground of likelihood of confusion, and all
four of the oppositions are sustained on the ground of
likelihood of dilution by blurring, and as a result,
registration to applicants is hereby refused in all four
CRACKBERRY applications involved herein.