Research In Motion Limitedv.Fashionberry, Inc.

Trademark Trial and Appeal Board

Sep 30, 2011

No. 91191572 (T.T.A.B. Sep. 30, 2011)

Mailed: September 30, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Research In Motion Limited
v.
Fashionberry, Inc.
_____

Opposition No. 91191572
_____

William R. Towns and Jeffrey J. Morgan of Novak Druce + Quigg LLP
for Research In Motion Limited.

Fashionberry, Inc., pro se.
______

Before Bucher, Holtzman and Mermelstein, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:
Fashionberry, Inc. (applicant) has filed an application to
register the mark shown below for "providing online non-
downloadable magazines in the field of fashion design and fashion
trends" in Class 41:1

1 Application Serial No. 77580530, filed September 27, 2008, based on
an allegation of first use on August 1, 2008 and first use in commerce
on September 1, 2008. The application contains the following color
statement and description of the mark: “The color(s) light blue (RGB
96/175/221) dark blue (RGB 16/9/86) grey (RGB 159/159/159) is/are
claimed as a feature of the mark”; “The mark consists of the complete
one word ‘FASHIONBERRY’ in the font style known as smart frocks and
using the color light blue with a stylized earring loop with a dark
blue berry on one end.”
THIS OPINION IS NOT
A PRECEDENT OF
THE TTAB
Opposition No. 91191572
2

Research In Motion Limited (opposer) filed a notice of
opposition on the ground of likelihood of confusion.2 Opposer
alleges that that it has used and registered the mark BLACKBERRY
in connection with handheld electronic devices, including smart
phones and related goods and services "as well as promotional and
collateral goods"; that the BLACKBERY mark "is famous in
connection with such goods and services”; and that applicant's
mark, when applied to applicant's services, so resembles
opposer's previously used and registered marks as to be likely to
cause confusion. Opposer has identified various registrations
for “BLACKBERRY” marks in its notice of opposition, including
Registration Nos. 2402763, 2672464, 2700671, 2844340, 2842571
3098588 and 3102687.
Applicant’s answer, in effect, denies the salient
allegations of the notice of opposition.3

2 Opposer’s pleaded claim of dilution was neither tried nor argued and
it is therefore considered waived.
3 Applicant's answer is more in the nature of argument than an answer,
and does not specifically admit or deny opposer's allegations.
Nevertheless, applicant’s arguments indicate that applicant does not
admit any of the allegations, but rather indicate a good faith attempt
to dispute the allegations. We therefore construe applicant’s answer
as an effective denial of the allegations in the notice of opposition.
We also note that this results in no prejudice to opposer inasmuch as
opposer in its brief has not relied on any asserted admissions in the
answer.
Opposition No. 91191572
3
The record includes the pleadings; the file of the involved
application; and opposer's notices of reliance on its 2010 Annual
Report obtained from the Internet showing the URL and date of
publication; TARR printouts of a number of opposer’s pleaded
registrations for its BLACKBERRY marks;4 and printouts from
applicant's website (fashionberry.com) and opposer's website
(blackberry.com), showing the URL and the date they were accessed
and printed.
Applicant did not take any testimony or offer any other
evidence in its own behalf. Only opposer filed a brief.
STANDING AND PRIORITY
The TARR records submitted by opposer show that opposer is
the owner of the following currently subsisting registrations:5
Registration No. 2672464 for the typed mark
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 more electronic handheld units
from a data store on or associated with a personal
computer or a server; and software for the

4 Although opposer also alleged that it has used and registered marks
other than BLACKBERRY that incorporate the suffix –BERRY, opposer
submitted no evidence or argument on this point and we give it no
further consideration.
5 Office records show that subsequent to the filing of opposer’s notice
of reliance, two of the registrations opposer made of record,
Registration Nos. 2402763 and 2842571, were cancelled on June 10, 2011
and December 24, 2010, respectively, for failure to file Section 8
affidavits. When a registration owned by a party has been properly
made of record, and the status of the registration changes between the
time it was made of record and the time the case is decided, the Board
will take judicial notice of the current status of the registration, as
shown by the records of the Office. See TBMP §704.03(b)(1)(A) (3d ed.
2011). Accordingly, the cancelled registrations have not been
considered.
Opposition No. 91191572
4
synchronization of data between a remote station or
unit and a fixed or remote station or unit" in Class
9.6

Registration No. 2700671 for the typed mark BLACKERRY
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
Class 38.7

Registration No. 2844340 for the typed mark
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 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 Class 38; 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 voice
communications" in Class 41.8

Registration No. 3098588 for the standard character
mark BLACKBERRY CONNECTION for "newsletter relating
to internet e-mail services and wireless data

6 Issued January 7, 2003; Section 8 affidavit accepted.
7 Issued March 25, 2003; Section 8 affidavit accepted.
8 Issued May 25, 2004; combined Sections 8 and 15 affidavit accepted
and acknowledged.
Opposition No. 91191572
5
messaging services and voice communication services
and technical support services for hardware and
software for wireless data network services and voice
communication services" in Class 16.9

Registration No. 3102687 for the mark
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 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 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 Class 41.10

Having properly made its registrations of record, opposer's
standing has been established, and its priority with respect to
the registered marks for the goods and services identified
therein is not in issue. King Candy Co. v. Eunice King's
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).

9 Issued May 30, 2006.
10 Issued June 13, 2006.
Opposition No. 91191572
6
LIKELIHOOD OF CONFUSION
Our determination under Section 2(d) is based on an analysis
of all of the probative facts in evidence that are relevant to
the factors bearing on the likelihood of confusion issue. In re
E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In any likelihood of confusion analysis, however, two key
considerations are the similarities or dissimilarities between
the marks and the similarities or dissimilarities between the
goods and/or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) ("The
fundamental inquiry mandated by Section 2(d) goes to the
cumulative effect of differences in the essential characteristics
of the goods [and/or services] and the differences in the
marks."). We discuss the relevant du Pont factors below.
Fame of Opposer's Mark

Opposer argues that through its “longtime use” of the
BLACKBERRY mark since 1999 and “[a]s a consequence of the
significant sales, world-wide user base and extensive promotion
and advertising” of its BLACKBERRY mark, the mark “has become
famous and well known.” Br., pp. 6-7.
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 legal protection it
Opposition No. 91191572
7
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 clearly prove it. Leading Jewelers Guild Inc.
v. LJOW Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB 2007).
Opposer has submitted no evidence establishing the fame or
recognition of its BLACKBERRY mark. Opposer has relied on its
annual report to show financial and other information concerning
the sale of its goods and services under the mark. However, the
statements contained in the annual report are hearsay, and not
admissible for opposer’s purpose. The annual report is of record
only for what it shows on its face; it is not admissible for the
truth of any matters stated therein, such as opposer's sales
figures. See Midwest Plastic Fabricators Inc. v. Underwriters
Laboratories Inc., 12 USPQ2d 1267, 1270 at n. 5 (TTAB 1989)
(annual report in evidence only for what it showed on its face),
aff'd, 906 F.2d 1568, 15 USPQ2d 1359 (Fed. Cir. 1990); 7-Eleven
Inc. v. Wechsler, 83 USPQ2d 1715, 1717 n.2 (TTAB 2007) (materials
made of record by notice of reliance under 37 CFR §2.122(e) not
admissible for the truth of the matters contained therein, unless
a competent witness has testified to the truth of such matters).
Opposer may rely on its registrations to prove its mark has
been in use as of the filing date of the underlying applications,
the earliest of which issued from an application filed in
December 1998. However, this is not an extraordinary length of
time, and in any event, long use and/or registration of a mark,
Opposition No. 91191572
8
without evidence of the extent of consumer exposure to or
recognition of the mark over the years, is not sufficient to
prove fame or to demonstrate any degree of recognition and
strength in the market.
Similarity/Dissimilarity of the Goods/Services
Opposer contends that applicant's services of "providing
online non-downloadable magazines in the field of fashion design
and fashion trends" are "highly related" to the goods and
services identified in opposer’s registrations. Opposer focuses,
in particular, on the following goods and services set forth, for
example, in Registration No. 2844340:
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 fixed or remote station or unit and
software which enables and provides one-way and two-
way wireless connectivity to data, including
corporate data; and

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 support of its contention that the respective goods
and/or services are “highly related,” opposer argues that its
Opposition No. 91191572
9
wireless communications devices include smartphones; that such
goods, as well as the services of opposer, are related to
applicant’s services “as they are related to content that is
commonly provided via wireless communication devices and
software”; that content provided by applicant's online non-
downloadable magazines in the field of fashion “is commonly
accessed through wireless devices such as BLACKBERRY
smartphones”; and that users of applicant’s services “will access
the online content” through opposer’s smartphones. Br., pp. 8-9.
Opposer points to the printout from its website, titled
“BlackBerry App World,” which shows, as described by opposer, “a
wide variety of wireless applications for download,” including
applications with fashion content. Id., p. 8.
Opposer’s website, like its annual report, is only of record
for what it shows on its face, namely that the content appeared
and the public was exposed to that content. To the extent that
opposer is relying on the website for the truth of its contents,
e.g., as evidence that opposer’s goods are smartphones, or that
opposer is actually using its mark on any goods or services
displayed on the website, the website is hearsay and not
admissible for that purpose. Even if we accept that opposer’s
goods, as identified, include “smartphones” and opposer’s
unsupported assertions regarding content that is “commonly
provided” for download to those devices, the evidence is
insufficient to establish whether a relationship exists between
Opposition No. 91191572
10
opposer’s goods and applicant’s services. As identified,
applicant is offering services in the nature of non-downloadable
online magazines, not software or an application for download on
a mobile device. The goods and services are specifically
different, and based on this record, any relationship between
them is tenuous at best. There is no evidence that applicant’s
services are complementary in use or function to opposer’s
smartphones, or that the goods and services are of a type that
purchasers would expect to emanate from, or be associated with,
the same source. The fact that the goods and services in some
broad sense may all be “related to content” is clearly not a
sufficient basis, in and of itself, for a finding that the goods
and services are related. See, e.g., Bose Corp. v. QSC Audio
Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1310 (Fed. Cir.
2002) (“broad general market category is not a generally reliable
test of relatedness of products”). Furthermore, inasmuch as
virtually all goods and services are accessible online, we could
hardly find that applicant’s online magazine services are related
to opposer’s smartphones simply because those services can be
accessed through a smartphone.
As for opposer’s email and other services, there is no
evidence to even suggest that these services and online
non-downloadable magazine services would be associated with a
common source. We also have no evidence that consumers are
Opposition No. 91191572
11
likely to encounter these services in such a manner that they
would assume that there is a relationship between their sources.
Channels of Trade/Conditions of Purchase
In the absence of any restrictions or limitations in the
application and registrations, we must assume that opposer's
wireless devices and applicant's online magazine services are
sold through all the normal and usual trade channels for such
goods and services to all the usual purchasers of such goods and
services. See Octocom Systems Inc. v. Houston Computer Services
Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1987).
Applicant's services are obviously provided over the
Internet. There is no evidence of record showing how opposer’s
goods or its services are marketed or sold. In any event, “the
mere fact that goods and services may both be advertised and
offered through the Internet is not a sufficient basis to find
that they are sold through the same channels of trade.” Parfums
de Coeur Ltd. v. Lazarus, 83 USPQ2d 1012, 1021 (TTAB 2007).
Further, while we can assume that the usual purchasers for
smartphones and online non-downloadable magazine services would
include ordinary consumers, we have no evidence as to the cost of
opposer’s smartphones or the degree of care consumers would
exercise in purchasing them.
Similarity or Dissimilarity Between the Marks
We turn to a comparison of applicant’s mark
with the closest of opposer's marks, the typed mark BLACKBERRY.
Opposition No. 91191572
12
We note at the outset that similarity is not an absolute matter
but instead is a matter of degree. See In re Coors Brewing Co.,
68 USPQ2d 1059 (Fed. Cir. 2003). When goods and/or services are
highly related, "the degree of similarity necessary to support a
conclusion of likely confusion declines." Shen Manufacturing
Co., Inc. v. The Ritz Hotel Limited, 393 F.3d 1238, 73 USPQ2d
1350, 1354 (Fed. Cir. 2004). Conversely, when goods and/or
services are not highly related, and opposer has not shown that
they are in this case, a greater degree of similarity in the
marks is required to support a finding of likelihood of
confusion. Nor has opposer shown that its mark is famous. The
fame of a mark would magnify the significance of the similarities
between the marks which are compared. See Kenner Parker Toys
Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453
(Fed. Cir. 1992), cert. denied, 113 S. Ct. 181 (1992).
In determining the similarity or dissimilarity of marks, we
must consider the marks in their entireties in terms of sound,
appearance, meaning and commercial impression. See Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73
USPQ2d 1689 (Fed. Cir. 2005).
Opposer’s mark BLACKBERRY and applicant’s mark FASHIONBERRY
(and design) are similar to the extent that they share the suffix
BERRY. However, the mere fact that applicant's mark incorporates
a component of opposer's mark does not in itself compel a finding
that the two marks are confusingly similar. The first words in
Opposition No. 91191572
13
these marks, BLACK and FASHION, which contribute significantly to
the overall impressions of the marks, look and sound nothing
alike. We have considered that opposer’s mark, registered in
typed form, could reasonably be displayed in the same stylized
format as applicant’s mark thereby increasing the visual
similarity of the two marks. See, e.g., Citigroup Inc. v.
Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253,
1258-59 (Fed. Cir. 2011). However, the word portions of these
marks would still make a strong visual impact, apart from the
stylization, and their differences would be readily apparent.
Furthermore, the words BLACK and FASHION, respectively
combined with BERRY, cause the marks as a whole to differ
substantially in meaning and to create different, unitary
commercial impressions. BLACKBERRY is a familiar word with a
recognized meaning as a type of fruit. FASHIONBERRY, in
contrast, is an unfamiliar term with no recognized meaning.
Although applicant’s mark contains the word “berry”, and perhaps
conveys the idea of a “berry,” in the context of applicant’s mark
and services, that word incongruously suggests some connection to
“fashion” or something fashionable, an impression totally absent
from the mark BLACKBERRY. The design element in applicant’s
mark, whether perceived as a “berry” earring or simply a “berry,”
does not bring applicant’s mark closer to opposer’s mark, as
opposer contends; rather it merely adds to the overall “fashion”
image conveyed by the words in applicant’s mark.
Opposition No. 91191572
14
To the extent that the marks have some similarities due to
the presence of the word “BERRY” in both marks, we find that the
differences between the marks as a whole are more significant and
clearly outweigh those similarities, particularly when we
consider the differences between the parties’ respective goods
and services.
We recognize that opposer’s mark is arbitrary as applied to
opposer’s goods and services and it is therefore entitled to a
broader scope of protection than a less distinctive mark.
However, the scope of protection cannot extend so far as to
prevent registration of applicant's dissimilar mark for
essentially dissimilar services.
Conclusion
Opposer, as plaintiff in this proceeding, bears the burden
of going forward with sufficient proof of the material
allegations of the notice of opposition. See Sanyo Watch Co. v.
Sanyo Elec. Co., 691 F.2d 1019, 215 USPQ 833, 834 (Fed. Cir.
1982); Clinton Detergent Co. v. Proctor & Gamble Co., 302 F.2d
745, 133 USPQ 520, 522 (CCPA 1962) (“Opposer...has the burden of
proof to establish that applicant does not have the right to
register its mark.”). In this case opposer has not met that
burden. We find, on this record, that in view of the cumulative
differences in the marks and the respective goods and services,
a likelihood of confusion does not exist.
Decision: The opposition is dismissed.