Tuesday, October 25, 2011

TTAB Dismisses BLACKBERRY's 2(d) Opposition to FASHIONBERRY for Online Fashion Magazines

Applicant Fashionberry Inc., appearing pro se, did not submit testimony or any other evidence, nor did it file a brief, but it still survived a challenge by RIM to its application to register the mark FASHIONBERRY & Design (shown below) for "providing online nondownloadable magazines in the field of fashion design and fashion trends." RIM claimed that the mark would be likely to cause confusion with its registered mark BLACKBERRY for handheld electronic devices and related goods and services. Research In Motion Limited v. Fashionberry, Inc., Opposition No. 91191572 (September 30, 2011) [not precedential].

RIM claimed that the BLACKBERRY mark is famous in light of its use of the mark since 1999, significant sales, world-wide user base, and extensive promotion and advertising. Unfortunately, RIM failed to submit any evidence to support its claim to fame. It submitted an annual report, but statements in an annual report are inadmissible hearsay: "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."

RIM could rely on its registrations to show use of the mark since the filing date of the underlying applications (December 1998). However, that was "not an extraordinary length of time," and insufficient to prove fame "without evidence of the extent of consumer exposure to or recognition of the mark over the years."

RIM also contended that involved goods/services are "highly related," arguing that content provided by applicant's online fashion magazines "is commonly accessed through wireless devices such as BLACKBERRY smartphones." Even assuming, despite the lack of proof, that such content is commonly accessed on RIM's devices, the evidence of relatedness was still insufficient. "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."

There was no evidence of record as to RIM's channels of trade, no evidence as to the cost of RIM's goods, and no evidence of the degree of care exercised by buyers of RIM's goods.

As to the marks, the Board found the differences in the marks to be "readily apparent," their meaning substantially different, and the commercial impressions distinct. As a whole the difference "clearly outweigh [the] similarities, particularly when we consider the differences between the parties' respective goods and services."

And so the Board dismissed the opposition.

TTABlog comment: RIM got rope-a-doped, didn't it? Is there any doubt that RIM could have proved BLACKBERRY to be a famous mark? Maybe RIM will attempt a second bite of the apple via a civil action for review under Section 1071(b)?

Text Copyright John L. Welch 2011.


At 9:02 AM, Anonymous Anonymous said...

This gives new meaning to the expression "phoning it in."

At 11:00 PM, Anonymous Anonymous said...

I do not see a conflict here. There are many "berry" marks. Over 350 in these classes alone. Are they going to go after Burberry, Turnberry, MomoBerry, Millsberry, Trueberry, and HALLE BERRY? All in Class 16 or 41.

If so - good luck.

At 1:17 PM, Blogger Ron Coleman said...

Berry distressing. How could bona fide proof of fame not have been submitted?


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