We will be discussing one Trademark Trial and Appeal Board case and one Federal Circuit case during our weekly SoCal IP Institute meeting on Monday, June 11, 2012. Brief synopses are presented below.
Research in Motion Ltd. v. Defining Presence Marketing Group, Inc. & Axel Ltd. Co., Opposition Nos. 91178668, 91179490, 91181076 (T.T.A.B. Feb. 27, 2012) (attached).
In an opposition case before the Trademark Trial and Appeal Board (TTAB), Research in Motion (RIM) opposed intent-to-use applications to register the mark CRACKBERRY for clothing items and marketing, computer and communications services. RIM previously registered the mark BLACKBERRY for “handheld devices including smart phones and related goods and services as well as promotional and collateral goods.” RIM argued that the mark CRACKBERRY was likely to cause confusion with BLACKBERRY and dilute the distinctiveness of their famous trademark.
The defendants argued that their mark was a parody of BLACKBERRY. However, the Board stated that the parody defense is available only if the parody is not used to designate the source of the applicant’s goods or services.
Before applying the du Pont factors, the TTAB found that BLACKBERRY was a famous mark. The Board noted that RIM had sold billions of dollars worth of BLACKBERRY products to millions of consumers and spent tens of millions of dollars advertising and promoting the mark. The Board also noted that the media has extensively covered the BLACKBERRY brand and that BLACKBERRY consistently appears on the lists of the most famous and valuable trademarks in the world.
Given the similarities in sight and sound of the marks and the fact that the public began using the nickname “Crackberry” to refer to “addictive” BLACKBERRY devices before the defendants applied to register the CRACKBERRY mark, the TTAB found that the du Pont factors pointed to a likelihood of confusion.
Turning to the issue of dilution under Section 43(c) of the Lanham Act, the TTAB found that the BLACKBERRY trademark was sufficiently famous to meet the higher standard for fame required in the dilution context. The TTAB found that the CRACKBERRY mark was likely to dilute, by blurring, the distinctiveness of the trademark BLACKBERRY. The Board noted that there is “a high degree of similarity” between the marks.
Apple, Inc. v. Samsung Electronics Co., Ltd., Case No. 2012-1105 (Fed. Cir. May 14, 2012) (attached).
In the Northern District of California, Apple filed a motion for preliminary injuction based on infringement of three of their design patents and a utility patent. Apple argued that Samsung’s Galaxy S 4G and Infuse 4G smartphones infringed two of their design patents and that Samsung’s Galaxy Tab 10.1 tablet infringed another design patent. Apple also argued that all three of Samsung’s devices infringed their utility patent toward the iPad and iPhone “bounce” feature. The district court denied the motion stating that Samsung had raised substantial questions regarding the validity of two of Apple’s design patents and that the other Apple patents were likely valid and infringed, but Apple had failed to provide sufficient evidence on the issue of irreparable harm.
On appeal, the Federal Circuit affirmed the denial of preliminary injunctive relief with respect to two of the design patents and the utility patent, stating that the district court had not abused its discretion in finding no likelihood of irreparable harm. Apple argued that the district court erred in requiring Apple to demonstrate a nexus between the claimed infringement and the alleged harm. The Federal Circuit disagreed, stating that a likelihood of irreparable harm cannot be shown if sales would be lost regardless of the infringing conduct. Apple also argued that the district court had erred in rejecting Apple’s dilution theory of irreparable harm. The Federal Circuit noted that “[t]he district court’s opinion thus makes clear that it did not categorically reject Apple’s ‘design erosion’ and ‘brand dilution’ theories, but instead rejected those theories for lack of evidence.”
The Federal Circuit did, however, vacate the denial of preliminary injunctive relief with respect to the D’889 patent. The district court had found that the D’889 patent was likely obvious, using a 1994 tablet design (the “Fidler tablet”) as the primary reference. For design patents, any finding of obviousness must be supported by a primary reference having basically the same appearance as the claimed design. The Federal Circuit disagreed with the district court, holding that the Fidler tablet was not a proper primary reference. The Federal Circuit stated that there are substantial differences in the overall visual appearance of the design patent and the Fidler reference. The Federal Circuit remanded this portion of the case for further proceedings to analyze the balance of harms and the public interest in deciding whether preliminary injunction is appropriate for the D’889 patent.
All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, June 11, 2012 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Attalla by 9 am Monday morning.