THIS OPINION IS A
`PRECEDENT OF THE TTAB
`
`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.”
`
`

`
`Opposition Nos. 91178668, 91179490 & 91181076
`
`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.
`
`- 2 -
`
`

`
`Opposition Nos. 91178668, 91179490 & 91181076
`
`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.
`
`
`- 3 -
`
`

`
`Opposition Nos. 91178668, 91179490 & 91181076
`
`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.
`
`- 4 -
`
`

`
`Opposition Nos. 91178668, 91179490 & 91181076
`
`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.
`
`- 5 -
`
`

`
`Opposition Nos. 91178668, 91179490 & 91181076
`
`BLACKBERRY
`
`BLACKBERRY
`
`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
`
`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
`
`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.
`
`- 6 -
`
`

`
`Opposition Nos. 91178668, 91179490 & 91181076
`
`BLACKBERRY
`CONNECTION
`
`
`
`data, including corporate data, and voice
`communications” in International Class 41;12
`
`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.
`
`- 7 -
`
`

`
`Opposition Nos. 91178668, 91179490 & 91181076
`
`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
`
`- 8 -
`
`

`
`Opposition Nos. 91178668, 91179490 & 91181076
`
`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)
`
`- 9 -
`
`

`
`Opposition Nos. 91178668, 91179490 & 91181076
`
`[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
`
`- 10 -
`
`

`
`Opposition Nos. 91178668, 91179490 & 91181076
`
`(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.
`
`- 11 -
`
`

`
`Opposition Nos. 91178668, 91179490 & 91181076
`
`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;
`
`- 12 -
`
`

`
`Opposition Nos. 91178668, 91179490 & 91181076
`
`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.
`
`
`- 13 -
`
`

`
`Opposition Nos. 91178668, 91179490 & 91181076
`
`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
`
`- 14 -
`
`

`
`Opposition Nos. 91178668, 91179490 & 91181076
`
`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.
`
`- 15 -
`
`

`
`Opposition Nos. 91178668, 91179490 & 91181076
`
`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.
`
`- 16 -
`
`

`
`Opposition Nos. 91178668, 91179490 & 91181076
`
`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.
`
`- 17 -
`
`

`
`Opposition Nos. 91178668, 91179490 & 91181076
`
`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
`
`- 18 -
`
`

`
`Opposition Nos. 91178668, 91179490 & 91181076
`
`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,
`
`- 19 -
`
`

`
`Opposition Nos. 91178668, 91179490 & 91181076
`
`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
`
`- 20 -
`
`

`
`Opposition Nos. 91178668, 91179490 & 91181076
`
`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