BLACKJACK dilutes BLACKBERRY trademark for smartphones?

Originally posted 2006-12-13 23:30:29. Republished by Blog Post Promoter

That’s what RIM, the maker of the Blackberry phone, says, according to press reports. Do we buy it — is there a likelihood of dilution (UPDATE:  link added)? Well, actually, they may very well have a point on this one. RIM has been there, more or less, before.

Priya Ganapati from TheStreet.com observes that the lawsuit may be a case of the best defense being a good offense:

The [Blackberry] Pearl has received rave reviews for multimedia capability that brings together a camera, email, and music and video playback, packaging it in a slim, hip design.But rival Samsung’s BlackJack phone, with its strong marketing and reviews, could steal its thunder.

BlackJack, which is being offered in the U.S. only by Cingular, has been burning up the airwaves with its catchy commercial. The latest television spot for the BlackJack, set to some very interesting music, shows off the phone like a deck of cards, emphasizing its thinness and its many functions.

It’s an effective campaign, and consumers who don’t know better could almost mistake it for the BlackBerry Pearl.

And that’s exactly why RIM is worried. …

There may be more to that lawsuit than just trademark issues. “The action by RIM is an indication that the BlackJack is selling well with Cingular. And it is certainly a prominent part of Cingular’s ad campaign,” says … an analyst with Oppenheimer …

LIKELIHOOD OF CONFUSION — which uses, loves and endorses the BlackBerry Pearl — hates hates hates when businesses use the Lanham Act as a substitute for good old competition on the merits. On the other hand, when Company B opens itself up to a trademark claim with a mark like BLACKJACK to Company A’s BLACKBERRY mark– well, they’ve dealt their adversary a pretty strong hand.

UPDATE:  Blackberry backs off, Jack.

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Author:Ron Coleman

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4 Responses to “BLACKJACK dilutes BLACKBERRY trademark for smartphones?”

  1. December 14, 2006 at 9:10 pm #

    “On the other hand, when Company B opens itself up to a trademark claim with a mark like BLACKJACK to Company A’s BLACKBERRY mark– well, they’ve dealt their adversary a pretty strong hand.”

    Well said. I look forward to hearing how this plays out. I assume you will be covering it here?

  2. December 14, 2006 at 9:37 pm #

    How many actual confused consumers does RIM have to produce to serve as prima facie evidence of confusion? I’m certain those confused consumers exist. I’ve seen people get confused over much more dissimilar marks.

    And to match your disclosure: all things being equal, I hate RIM, because I prefer Windows Mobile, which BlackJack uses. But RIM’s case seems pretty strong to this layman.

  3. December 15, 2006 at 1:24 am #

    I assume I will, too, Roland! Thanks.

    Martin, first of all, LIKELIHOOD OF CONFUSION is the standard for trademark infringement, and actual examples of confusion are not necessary to show a likelihood of confusion. But this is trademark dilution — follow the links — and the standard is, for marks that qualify (and under the new statute), likelihood of dilution.

    But I haven’t seen the complaint. Perhaps there’s a plain-vanilla infringement claim in there, too.

  4. December 15, 2006 at 1:49 am #

    OK, dilution is a new concept to me. Does that mean that in the famous Ford floormats case, Ford might prevail today if the floormats were shoddy or obscene or something?

    As for my question, I’m just wondering whether actual examples of confusion suffice as proof of a likelihood of confusion. I mean, there are people who are just confused, period, so one example might not constitute proof; but if I found 100 people who thought they were buying Blackberries when they bought BlackJacks, then there’s a problem. So does likelihood mean “It can happen” or “It’ll happen often.” 100 people seems to me like proof that “It can happen”, and isn’t just a case of a random kook; but if the standard is “It’ll happen often,” well, maybe I found the only 100 confused people in the market.

    This is a hair above academic concern for me. At one time, a friend tipped me to a great deal on Tablet PCs on ebay. Only problem was, they weren’t Tablet PCs, since they weren’t running Microsoft Windows XP Professional Tablet PC Edition ™; they were tablet computers running Windows 2000 and some third-party pen software. The manufacturer (who also sells real Tablet PCs) never called them Tablet PCs; but the ebay lister did, multiple times in multiple listings, and I couldn’t get ebay to take action to correct this. And the problem is, if it doesn’t run Microsoft Windows XP Professional Tablet PC Edition ™ (or Vista), it won’t run Tablet UML; but I just know some day I’m going to get a support call from someone who bought Tablet UML and complains because it won’t run on their “Tablet PC”. I’m going to lose time and money because ebay can’t understand likelihood of confusion.

    To make things more complicated, Microsoft hasn’t claimed “Tablet PC” (which I’ll bet would be horribly hard to register or to defend), only Microsoft Windows XP Professional Tablet PC Edition ™. But since the manufacturers pretty much all need to license Microsoft OSs, they’re smart enough not to get on Microsoft’s bad side by verging on the unclaimed term. Those that aren’t making true Tablet PCs are careful to call them tablet computers or other descriptive names without getting near Tablet PC.

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