Research in Motion Ltd.v.Blackfire Research Corp.

Trademark Trial and Appeal Board

Sep 14, 2010

No. 91182465 (T.T.A.B. Sep. 14, 2010)

Mailed: September 14, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Research In Motion Ltd.
v.
Blackfire Research Corp.
_____

Opposition No. 91182465
to application Serial No. 77145536
_____

William R. Towns of Novak Druce + Quigg LLP for Research In
Motion Ltd.

Blackfire Research Corp., pro se.
______

Before Seeherman, Cataldo and Mermelstein,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

On March 31, 2007, applicant, Blackfire Research Corp.,
filed an application to register in standard characters on
the Principal Register the mark BLACKFIRE RESEARCH,
asserting January 7, 2007, as the date of first use of the
mark anywhere and in commerce for the following goods, as
amended by agreement of the parties herein:
Audio amplifiers; Audio circuit boards; Audio
electronic components, namely, surround sound
systems; Audio equipment for vehicles, namely,
stereos, speakers, amplifiers, equalizers,
crossovers and speaker housings; Audio mixers;
Audio processing equipment, namely, limiters and
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Opposition No. 91182465
2
compressors; Audio speaker enclosures; Audio
speakers; Audio-video receivers; Computer hardware
and computer software programs for the integration
of text, audio, graphics, still image and moving
pictures into an interactive delivery for
multimedia applications; Computer hardware and
software for setting up and configuring local area
networks; Computer programs for audio and wireless
devices that are used to play music that resides
on the computer, to external speakers over a
wireless network; Computer software for
administration of computer local area networks;
Computer software for controlling and managing
access server applications; Computer software for
manipulating digital audio information for use in
audio media applications; Computer software for
processing digital music files; Computer software
for wireless content delivery; Computer software
for audio and wireless devices that is used to
play music that resides on the computer, to
external speakers over a wireless network;
Computer software platforms for audio or wireless
devices; Computer software to control and improve
computer and audio equipment sound quality;
Computer software to enhance the audio-visual
capabilities of multimedia applications, namely,
for the integration of text, audio, graphics,
still images and moving pictures; Digital audio
players; Electric audio playback units with lights
and speakers; Electronic products for the
generation, measurement, and analysis of audio
signals, namely, audio analyzers; Electronic
products for the manipulation of the frequency,
time, and amplitude characteristics of audio
signals, namely, audio processors; Wireless
computer peripherals

in International Class 9.1
Registration has been opposed by Research In Motion,
Ltd. (“opposer”). As grounds for opposition, opposer
asserts that it is the owner of the following marks,
previously used and registered on the Principal Register,

1 Application Serial No. 77145536.
Opposition No. 91182465
3
and which registrations were made of record during opposer’s
testimony period:2
BLACKBERRY (in typed or standard characters)3 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 synchronization of
data between a remote station or unit and a fixed
or remote station or unit

in International Class 9;
BLACKBERRY (in typed or standard characters)4 and
5 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;
6
and BLACKBERRY (in typed or standard characters)7 and

2 Opposer further pleaded ownership of Registration Nos. 2678454,
2672472, and 2700678, which subsequently were cancelled under
Section 8 of the Trademark Act.
3 Registration No. 2672464 issued on January 7, 2003. Section 8
affidavit accepted.
4 Registration No. 2700671 issued on March 25, 2003. Section 8
affidavit accepted.
5 Registration No. 2402763 issued on November 7, 1999. Section 8
affidavit accepted; Section 15 affidavit acknowledged.
6 Registration No. 2844339 issued on May 25, 2004.
7 Registration No. 2844340 issued on May 25, 2004.
Opposition No. 91182465
4
RESEARCH IN MOTION (in typed or standard characters)8
for the following goods and services:
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; 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 International Class 41; and

8 Registration No. 2833837 issued on April 20, 2004.
Opposition No. 91182465
5
RESEARCH IN MOTION (in typed or standard characters)9
for
computer software and computer hardware and radio
based devices and parts therefore, used in the
fields of business, science, medicine, education,
defense, entertainment and personal computing, to
facilitate the receipt and transmission of
computer information and data via a wireless
remote access to computer applications and network
environments with no requirement for a direct,
real-time interface

in International Class 9.
Opposer further alleges that it has spent substantial
sums of money advertising its goods and services under the
BLACKBERRY and RESEARCH IN MOTION marks; that, as a result,
opposer has acquired a highly favorable reputation among
consumers and valuable goodwill in these marks; that, based
upon the duration and extent of use and promotion of its
marks, opposer’s BLACKBERRY and RESEARCH IN MOTION marks
have become famous; that opposer has made use of these marks
on the identified goods and services since prior to any date
of use upon which applicant may rely; that applicant’s mark,
when used in connection with applicant’s goods, so resembles
opposer’s previously used and registered marks for its
recited goods and services as to be likely to cause
confusion, to cause mistake, and to deceive; and that
opposer will be damaged thereby.

9 Registration No. 2036380 issued on February 11, 1997. Section
8 affidavit accepted; Section 15 affidavit acknowledged.
Renewed.
Opposition No. 91182465
6
In its answer, applicant admits that “[opposer’s] goods
with the BLACKBERRY Mark as well as other goods such as the
Samsung SmartPhone with the BLACKJACK Mark are well known
and widely available for purchase by US Consumers;”10 and
that “[opposer’s] registrations for the RESEARCH IN MOTION
Mark are valid, subsisting and not cancelled.”11 Applicant
otherwise denies the salient allegations of the notice of
opposition.
The Record
The record in this case includes the pleadings and the
file of the involved application. In addition, during its
assigned testimony period opposer submitted a notice of
reliance upon printouts of information from the electronic
database records of the United States Patent and Trademark
Office (USPTO) for its pleaded registrations, showing
current status and title thereof. During its assigned
testimony period, applicant filed notices of reliance upon a
printout of information from the electronic database records
of the USPTO for its involved application, and a copy of its
answer and the exhibits attached thereto.
As noted above, by operation of Trademark Rule 2.122,
applicant’s answer and the application file already form
part of the record without any action by the parties and, as

10 Answer, para. 1.
11 Id. at para. 13.

Opposition No. 91182465
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such, it was unnecessary for applicant to submit these
materials by notice of reliance. However, the exhibits
submitted with applicant’s answer do not automatically form
part of the record in this proceeding. See Trademark Rule
2.122(c). Exhibit A, consisting of materials downloaded
from the Internet, and indicating the date they were
accessed and printed, their source (URL); and their
relevance, has properly been made of record by applicant’s
notice of reliance. See Safer, Inc. v. OMS Investments,
Inc., 94 USPQ2d 1031 (TTAB 2010). However, Exhibit B,
consisting of a chart of information assertedly obtained
from the Internet, is not a document of the sort that may be
introduced by notice of reliance, but rather would require
authentication by a testimonial witness in order to properly
make it of record. Because it was not properly submitted,
we do not consider Exhibit B to be part of the evidentiary
record.
Parties’ Briefs
On June 15, 2009, during its testimony period,
applicant filed a trial brief along with its notices of
reliance. We note that while it is unusual for a defendant
in a Board inter partes proceeding to file its brief prior
to plaintiff’s time for filing a brief, the Trademark Rules
Opposition No. 91182465
8
do not specifically prohibit it. Therefore, we have
considered applicant’s early-filed brief.12
On October 14, 2009, opposer filed its trial brief,
which was due no later than October 1, 2009. On December 3,
2009, applicant filed a second trial brief, which was due no
later than December 2, 2009. On May 19, 2010, the Board
granted the parties’ cross-motions to strike the other’s
untimely trial brief.13 Accordingly, there is no operative
trial brief for opposer herein.14
Opposer’s Standing
Because opposer has properly made its pleaded
registrations of record, and further has shown that it is
not a mere intermeddler, we find that opposer has
established its standing to oppose registration of
applicant’s mark. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); and Lipton

12 We hasten to add that the result in this case would be the same
regardless of whether we considered applicant’s brief. We
further note that the exhibits submitted with applicant’s early-
filed brief are identical to the materials submitted by applicant
under its notices of reliance.
13 In the May 19, 2010 order, the Board noted that determination
of the parties’ cross-motions to strike had been deferred in
light of applicant’s consented amendment to its identification of
goods in order to allow the parties an opportunity to settle this
case. However, despite being afforded over 90 days in which to
do so, the parties did not submit an agreement to settle this
matter.
14 We note that, even in the event that we had accepted the
parties’ late-filed briefs, the exhibits attached thereto would
not have been considered because, to be of record, evidence must
be submitted during the parties’ assigned testimony periods. See
Trademark Rules 2.121(a) and 2.121(b)(1).
Opposition No. 91182465
9
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982).
Burden of Proof
Opposer, as the plaintiff herein, bears the burden of
proof with respect to its claim of priority of use and
likelihood of confusion. See, e.g., Bose Corp. v. QSC Audio
Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed.
Cir. 2002) (“[t]he burden of proof rests with the opposer …
to produce sufficient evidence to support the ultimate
conclusion of [priority of use] and likelihood of
confusion”); Sanyo Watch Co., Inc. v. Sanyo Elec. Co., Ltd.,
691 F.2d 1019, 215 USPQ 833, 834 (Fed. Cir. 1982) (“[a]s the
opposer in this proceeding, appellant bears the burden of
proof which encompasses not only the ultimate burden of
persuasion, but also the obligation of going forward with
sufficient proof of the material allegations of the Notice
of Opposition, which, if not countered, negates appellee’s
right to a registration”); and Clinton Detergent Co. v.
Proctor & Gamble Co., 302 F.2d 745, 133 USPQ 520, 522 (CCPA
1962) (“[o]pposer … has the burden of proof to establish
that applicant does not have the right to register its
mark”).
Opposer must establish its pleaded case of priority and
likelihood of confusion by a preponderance of the evidence.
Opposition No. 91182465
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Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1848 (Fed. Cir. 2000).
Priority of Use
Because opposer’s pleaded registrations are of record,
Section 2(d) priority is not an issue in this case as to the
marks therein and goods and services covered thereby.15 See
King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974).
Likelihood of Confusion
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue. See In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In
re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
Fame of Opposer’s Marks
We begin our likelihood of confusion analysis with the
fifth du Pont factor, which requires us to consider evidence
of the fame of opposer’s marks and to give great weight to

15 In addition, and as noted above, applicant admitted in its
answer to the notice of opposition that opposer’s pleaded
RESEARCH IN MOTION registrations are valid and subsisting.
Opposition No. 91182465
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such evidence if it exists. See Bose Corp. v. QSC Audio
Products Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir.
2002); Recot Inc. v. Becton, 214 F.3d 1322, 54 F.2d 1894
(Fed. Cir. 2000); and Kenner Parker Toys, Inc. v. Rose Art
Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir.
1992).
In this case, however, opposer has not introduced any
evidence to demonstrate that the marks in its pleaded
registrations are famous. Further, applicant’s above-noted
admission in paragraph one of its answer that goods bearing
opposer’s BLACKBERRY mark and the Samsung SmartPhone bearing
the BLACKJACK Mark are “well known and widely available for
purchase” falls far short of an admission that the marks in
opposer’s pleaded registrations are famous for purposes of
our likelihood of confusion determination. In fact,
although opposer pleaded, in paragraph 1 of its notice of
opposition, that “the BLACKBERRY mark is famous in
connection with RIM’s handheld wireless communications
devices, …” applicant stated in its answer only, as
indicated, that “RIM goods with the BLACKBERRY Mark … are
well known and widely available for purchase.” Further, in
response to opposer’s allegation in paragraph 9 that “the
BLACKBERRY marks have become well-known and famous,”
applicant admitted only that it “accepts that RIM has been
using the BLACKBERRY Marks prior to [applicant’s] actual or
Opposition No. 91182465
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constructive first use of [applicant’s] Mark.” Applicant
makes no other admissions in its answer regarding opposer’s
allegations of fame.
Thus, we find that applicant did not admit that any of
opposer’s marks are famous. In addition, we note that
opposer has not relied upon any putative admission by
applicant as to fame of its marks. On the contrary, in
opposer’s stricken brief on the case, opposer attempts to
introduce evidence of the asserted fame of its BLACKBERRY
mark. In view of the extreme deference that is accorded to
a famous mark in terms of the wide latitude of legal
protection it receives, and the dominant role fame plays in
the likelihood of confusion analysis, it is the duty of a
party attempting to establish the fame of a mark to clearly
prove it. Leading Jewelers Guild Inc. v. LJOW Holdings LLC,
82 USPQ2d 1901, 1904 (TTAB 2007). However, opposer has not
submitted any timely evidence of the fame of the marks in
its pleaded registrations. In the absence of any such
evidence or clear admissions by applicant that opposer’s
marks are famous, we are left with the mere assertions of
fame in opposer’s notice of opposition.
Accordingly, on this record we cannot find that the
marks in any of opposer’s pleaded registrations are famous.
Opposition No. 91182465
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The Goods and Services
Next we turn to our consideration of the second du Pont
factor, i.e., the similarity or dissimilarity of the
parties’ goods and services. As identified, applicant’s
goods consist of various audio components as well as
computer hardware, software and peripherals used to
generate, access, manipulate and manage audio, text, video
and multimedia signals. Opposer’s goods and services
include electronic wireless units used to manage personal
information as well as transmit and receive voice
communications; computer hardware and software used for
various data communications purposes; electronic mail, data
messaging, paging, and voice communication services and
educational services relating thereto.
We observe that certain specific goods identified by
applicant, including “computer software for wireless content
delivery” and “computer software for manipulating digital
audio information for use in audio media applications”
appear on their face to bear some similarity to opposer’s
“computer software and computer hardware … to facilitate the
receipt and transmission of computer information and data
via a wireless remote access to computer applications and
network environments with no requirement for a direct, real-
time interface” and “electronic handheld units for the
wireless receipt and/or transmission of data …” in that both
Opposition No. 91182465
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involve computer software. However, opposer has not
submitted any evidence to support a finding that these goods
are in fact related. Thus, we are left with opposer’s
unsupported assertions in its notice of opposition, denied
by applicant, regarding the similarity between its goods and
services and the goods recited in the involved application.
There is no per se rule mandating that likelihood of
confusion is to be found in all cases where the goods in
question involve computer software and/or hardware.
Information Resources, Inc. v. X*PRESS Information Services,
6 USPQ2d 1034 (TTAB 1988), citing In re Quadram Corp., 228
USPQ 863 (TTAB 1985). As the Board stated in Reynolds &
Reynolds Co. v. I.E. Systems, Inc., 5 USPQ2d 1749, 1751
(TTAB 1987), “in order to support a holding of likelihood of
confusion, there must be some similarity between the goods
and services at issue herein beyond the fact that each
involves the use of computers. In view of the fact that
computers are useful and/or used in almost every facet of
the world of business, commerce, medicine, law, etc., it is
obvious that distinctions must be made.” In the present
case, however, there is no evidence to support opposer’s
allegations in its notice of opposition that the parties’
respective goods and services are related. The terminology
of the identifications of goods and services, standing alone
in the present case, is an insufficient basis upon which to
Opposition No. 91182465
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conclude that the goods and services are related for
purposes of our analysis.
Thus, the du Pont factor of the similarity between the
parties’ respective goods and services does not weigh in
favor of a finding of likelihood of confusion.
The Marks
We turn then to the first du Pont factor, i.e., whether
applicant’s mark and opposer’s marks are similar or
dissimilar when viewed in their entireties in terms of
appearance, sound, connotation and overall commercial
impression. See Palm Bay Imports, Inc. v. Veuve Clicquot,
supra.
In this case, we find that applicant’s mark, BLACKFIRE
RESEARCH, is similar to the mark, BLACKBERRY, in opposer’s
pleaded registrations only in that the marks share the
common term “BLACK.” Applicant’s BLACKFIRE RESEARCH mark is
also similar to the mark, RESEARCH IN MOTION, in opposer’s
pleaded registrations only in that they share the common
term “RESEARCH.”
However, although applicant’s mark shares terms in
common with both of the marks in opposer’s pleaded
registrations, the similarities between the marks ends
there. Applicant’s BLACKFIRE RESEARCH mark clearly is
different in appearance and sound from opposer’s BLACKBERRY
and RESEARCH IN MOTION marks. The marks are also different
Opposition No. 91182465
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in connotation. A “blackberry” is a fruit, while
“blackfire” suggests, perhaps, a fire that blackens an area
it has burned.16 The mark RESEARCH IN MOTION appears to
connote ongoing, progressing research into unspecified
subjects or, possibly, research in the field of motion. We
note in addition that “research” appears to be suggestive of
technological goods and services of the type identified in
the pleaded registrations and subject application. As such,
the mere fact that applicant’s BLACKFIRE RESEARCH and
opposer’s RESEARCH IN MOTION marks share that term in common
is an insufficient basis upon which to find that the marks
are confusingly similar. In any event, the connotation
evoked by applicant’s BLACKFIRE RESEARCH mark is different
from the connotation of either opposer’s BLACKBERRY mark or
RESEARCH IN MOTION mark.
In view of the differences in appearance, sound and
connotation of the parties’ marks in the context of their
respective goods and services, we find that, despite both
marks including some common wording, the differences are
sufficient to distinguish applicant’s BLACKFIRE RESEARCH

16 “Blackfire” is also defined as a tobacco disease, see
Dictionary.com, citing Random House Dictionary, (2010), although
we are doubtful that this is the connotation that the mark would
convey in connection with applicant’s goods. The Board may take
judicial notice of dictionary definitions, including online
dictionaries which exist in printed format. See In re
CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB 2002).
See also University of Notre Dame du Lac v. J. C. Gourmet Food
Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983).
Opposition No. 91182465
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mark from opposer’s BLACKBERRY and RESEARCH IN MOTION marks
such that, overall, they convey dissimilar commercial
impressions.
Thus, the du Pont factor of the similarity of the marks
does not weigh in favor of a finding of likelihood of
confusion. We say this notwithstanding applicant’s
admission that opposer’s “goods with the BLACKBERRY Mark …
are well known,” and that BLACKBERRY is an arbitrary mark
for opposer’s goods. Although these points favor opposer,
on this record opposer’s rights in the mark BLACKBERRY do
not entitle it to prevent anyone else from using marks that
have “Black” as the first word or element.
Conclusion
We have carefully considered all of the evidence
pertaining to opposer’s claim of priority of use and
likelihood of confusion, including any evidence not
specifically discussed in this opinion.
We conclude that opposer has established its standing
and priority of use; however, the marks in opposer’s pleaded
registrations are more dissimilar from applicant’s mark than
similar; and that there is no evidence of record to support
a finding that opposer’s goods and services are related to
applicant’s recited goods despite some similarities based
upon the face of the identification of such goods and
services.
Opposition No. 91182465
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DECISION: The opposition is dismissed.