'CrackBerry' and Originality in Trademark Parodies

Parody and Likelihood of Confusion

With respect to likelihood of confusion, parody can be either a factor in the confusion analysis or a full defense to likelihood of confusion; the difference between the two is important, as it colors the way parties make their arguments and, ultimately, how a parody case is decided. If parody is a full defense, then it does not necessarily matter whether consumers think CRACKBERRY and BLACKBERRY-branded goods come from the same source; what matters is whether CRACKBERRY “reasonably could be perceived as commenting on” BLACKBERRY “or criticizing it, to some degree.” Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 583 (1994) (providing a definition of “parody” for copyright fair use); Harley Davidson, Inc. v. Grottanelli, 164 F.3d 806, 813 (2d Cir.1999) (importing the Campbell standard from copyright into trademark law). Where parody is merely a factor, then a finding of a legitimate parody may be enjoined if customers are likely to be confused. See also Starbucks U.S. Brands, LLC and Starbucks Corp. D.B.A. Starbucks Coffee Co. v. Marshall S. Ruben, 78 U.S.P.Q.2d 1741, 1754 (T.T.A.B. 2006) (finding a likelihood of confusion between LESSBUCKS and STARBUCKS for coffee).

For example, the Fourth Circuit found that consumers would not be confused by the defendant's use of CHEWY VUITON for a chewable dog toy ' presumably because consumers are smart enough to understand that a serious high-end fashion house would not likely make or authorize fuzzy toys for dogs. Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007). Similarly, the Tenth Circuit affirmed a lower court's ruling that the LARDASHE mark for pants for “large size women” did not infringe the JORDACHE mark ' again, presumably because consumers are not likely to think that Jordache would market to that demographic in that way.

In RIM, the Board applied the Federal Circuit's du Pont factors, In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973), and found that ' in light of the BLACKBERRY mark's fame, the similarity of the two marks, the closeness of trade channels used by the two companies, and the close connection between the goods and services on which the parties used (or sought to use) the proposed mark ' there was a likelihood of confusion. Based on this finding, the Board thus declined to permit the CRACKBERRY mark's registration for three out of the four classes of goods and services. In the Board's view, CRACKBERRY's parodic qualities were insufficient to combat confusion.

Parody and Likelihood of Dilution

With respect to trademark dilution, parody is a statutory defense. The Lanham Act's ' 43(c)(3)(A)(ii) states that “[a]ny fair use ' or facilitation of such fair use, of a famous mark by another person other than as a designation of source for the person's own goods or services, including use in connection with ' identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner[,]” shall not be actionable under the statute. 15 U.S.C. ' 1125(c)(3)(A)(ii). Therefore, whether a given mark's use dilutes or not, if it is a “ parody,” then the use cannot be enjoined on a dilution theory.

However, the dilution provision is not as clear as it initially seems. The statute provides that parody is a fair use, but states that such fair use must not be “as a designation of source for the person's own goods or services[.]” 15 U.S.C. ' 1125(c)(3)(A). But because trademark law requires that a mark be “use[d] in commerce” ' i.e., as a designation of source for goods or services ' the exception swallows the rule. See, e.g., Karl Storz Endoscopy-Am., Inc. v. Surgical Techs., Inc., 285 F.3d 848, 855 (9th Cir. 2002) (“'use in commerce' appears to contemplate a trading upon the goodwill of or association with the trademark holder”). A parody unattached to goods or services ' e.g., a critique of a famous brandholder that utilizes its marks ' would thus likely be outside the Lanham Act's purview.

In RIM, the Board took an approach similar to the Fourth Circuit's approach in Haute Diggity Dog and analyzed Axel's parody claims as a factor in the dilution inquiry rather than an affirmative defense. Using the familiar statutory test, 15 U.S.C. ' 1125(c)(2)(B), the Board found that all factors supported RIM; Axel's proposed uses of CRACKBERRY were likely to blur the distinctiveness of the BLACKBERRY marks and therefore the Board denied registration for all four classes of goods based on a likelihood of dilution.

Parodic Originality and Public Usage

In denying Axel's registrations, the Board placed much weight on the fact that the public adopted and popularized “CrackBerry” as a nickname for BlackBerry devices. Indeed, prior to Axel's trademark application filings in late 2006, “CrackBerry” had already been in wide use, even being named Merriam-Webster's “Word of the Year” for 2006. The Board stated that such public adoption was the “most important” factor undercutting the parody's effectiveness in avoiding dilution. This holding raises many issues, two of which I will discuss here.

First, originality is generally thought to be the province of copyrights and patents rather than trademarks. See, e.g., Publications Intern., Ltd. v. Landoll, Inc., 164 F.3d 337, 341-43 (7th Cir. 1998) (“trademark and trade dress law do not protect originality; they protect signifiers of source”). On this view, the question shouldn't be “who came up with the joke” but “do consumers identify it with the registrant?” In RIM, as in most cases applying the so-called “Public Use” rule, the answer seems obvious: average consumer's mental connection with CRACKBERRY will likely be with the senior user's goods. See Nat'l Cable Television Ass'n v. Am. Cinema Eds., Inc., 937 F.2d 1572, 1577-78 (Fed. Cir. 1991) (“public use by others inures to the claimant's benefit”). But this finding is in tension with the “bedrock principle” of trademark law that rights are acquired by use, not fortuity. Allard Enters., Inc. v. Advanced Programming Res., Inc., 146 F.3d 350, 358 (6th Cir. 1998). Who should benefit: the parodied mark's owner (who will never use the parody as a mark) or the party attempting to leverage the parody's goodwill for its own commercial purposes?

The second issue is more difficult due to the negative nature of the parody: Is the butt of the joke always (or ever) the correct arbiter for acceptable use? After all, it's hard to imagine RIM ever using CRACKBERRY for its own purposes purely due to the term's significant negative connotations. Take 2011's WHO DAT controversy as a more positive example. In January 2010, the NFL sent cease and desist letters to purveyors of t-shirts bearing the phrase “WHO DAT.” Owners of an earlier “WHO DAT” trademark challenged the NFL's assertions. Eventually, the parties settled and entered into a co-branding arrangement. This cooperative outcome obscures the bigger issue: Should anyone have been permitted to protect the phrase as a trademark? Use of “WHO DAT” by the public, after all, can be traced back to the 19th century. Cf. Grottanelli, 164 F.3d at 808 (finding that “hog” had become generic as applied to large motorcycles before Harley-Davidson began making trademark use of the word and therefore denying injunctive relief). Just because two parties are the only ones claiming a right doesn't necessarily mean either should get it.

Timothy Denny Greene is an associate in the Technology Transactions Group at Morrison & Foerster LLP in San Francisco. He can be reached at 415-268-7568.

In Research in Motion Ltd. v. Defining Presence Marketing Group, Inc. and Axel Ltd. Co., Opposition No. 91181076 (T.T.A.B. Feb. 27, 2012), http://ttabvue.uspto.gov/ttabvue/ttabvue-91181076-OPP-8.pdf, the Trademark Trial and Appeal Board (the “Board”) addressed whether Defining Presence Marketing Group and Axel Ltd. (collectively, “Axel”) could obtain trademark registrations for CRACKBERRY for various goods and services. Research in Motion (“RIM”), producer of the BlackBerry device, opposed the registrations based on a likelihood of confusion and dilution with its BLACKBERRY group of marks. The Board wound its way through the likelihood of confusion and dilution analyses, eventually finding that Axel could not register the CRACKBERRY mark for any of its proposed uses. Three applications, related to computer services, e-mail, online retailing and the like, were denied due to a likelihood of confusion and dilution, while the last registration, for CRACKBERRY-branded clothing, was denied for likelihood of dilution. Slip op. at 1-3 (describing the proposed goods and services).

Parody and Trademark Registration

As the Board noted, trademark parody issues take on a different hue in the context of a request for registration, as opposed to an already-existing use sought to be enjoined. While a given parody may be protected under the First Amendment, such a conclusion does not compel the PTO to permit its registration. The difference is between affirmative restraint ' i.e., judicially provided injunctive relief ' and withholding a governmental benefit for failure to comply with statutory requirements. See 15 U.S.C. ' 1052(d) (a mark that fails the likelihood of confusion test with respect to a previously registered mark is not registrable). Thus, even if Axel might succeed in using CRACKBERRY as a mark in commerce, it does not follow that the mark is registrable, which would provide Axel with statutory benefits like incontestability and the presumption of exclusive use.

Parody and Likelihood of Confusion

With respect to likelihood of confusion, parody can be either a factor in the confusion analysis or a full defense to likelihood of confusion; the difference between the two is important, as it colors the way parties make their arguments and, ultimately, how a parody case is decided. If parody is a full defense, then it does not necessarily matter whether consumers think CRACKBERRY and BLACKBERRY-branded goods come from the same source; what matters is whether CRACKBERRY “reasonably could be perceived as commenting on” BLACKBERRY “or criticizing it, to some degree.” Campbell v. Acuff-Rose Music, Inc. , 510 U.S. 569, 583 (1994) (providing a definition of “parody” for copyright fair use); Harley Davidson, Inc. v. Grottanelli , 164 F.3d 806, 813 (2d Cir.1999) (importing the Campbell standard from copyright into trademark law). Where parody is merely a factor, then a finding of a legitimate parody may be enjoined if customers are likely to be confused. See also Starbucks U.S. Brands, LLC and Starbucks Corp. D.B.A. Starbucks Coffee Co. v. Marshall S. Ruben , 78 U.S.P.Q.2d 1741, 1754 (T.T.A.B. 2006) (finding a likelihood of confusion between LESSBUCKS and STARBUCKS for coffee).

For example, the Fourth Circuit found that consumers would not be confused by the defendant's use of CHEWY VUITON for a chewable dog toy ' presumably because consumers are smart enough to understand that a serious high-end fashion house would not likely make or authorize fuzzy toys for dogs. Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC , 507 F.3d 252 (4th Cir. 2007). Similarly, the Tenth Circuit affirmed a lower court's ruling that the LARDASHE mark for pants for “large size women” did not infringe the JORDACHE mark ' again, presumably because consumers are not likely to think that Jordache would market to that demographic in that way.

In RIM, the Board applied the Federal Circuit's du Pont factors, In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973), and found that ' in light of the BLACKBERRY mark's fame, the similarity of the two marks, the closeness of trade channels used by the two companies, and the close connection between the goods and services on which the parties used (or sought to use) the proposed mark ' there was a likelihood of confusion. Based on this finding, the Board thus declined to permit the CRACKBERRY mark's registration for three out of the four classes of goods and services. In the Board's view, CRACKBERRY's parodic qualities were insufficient to combat confusion.

Parody and Likelihood of Dilution

With respect to trademark dilution, parody is a statutory defense. The Lanham Act's ' 43(c)(3)(A)(ii) states that “[a]ny fair use ' or facilitation of such fair use, of a famous mark by another person other than as a designation of source for the person's own goods or services, including use in connection with ' identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner[,]” shall not be actionable under the statute. 15 U.S.C. ' 1125(c)(3)(A)(ii). Therefore, whether a given mark's use dilutes or not, if it is a “ parody,” then the use cannot be enjoined on a dilution theory.

However, the dilution provision is not as clear as it initially seems. The statute provides that parody is a fair use, but states that such fair use must not be “as a designation of source for the person's own goods or services[.]” 15 U.S.C. ' 1125(c)(3)(A). But because trademark law requires that a mark be “use[d] in commerce” ' i.e., as a designation of source for goods or services ' the exception swallows the rule. See, e.g., Karl Storz Endoscopy-Am., Inc. v. Surgical Techs., Inc. , 285 F.3d 848, 855 (9th Cir. 2002) (“'use in commerce' appears to contemplate a trading upon the goodwill of or association with the trademark holder”). A parody unattached to goods or services ' e.g., a critique of a famous brandholder that utilizes its marks ' would thus likely be outside the Lanham Act's purview.

In RIM, the Board took an approach similar to the Fourth Circuit's approach in Haute Diggity Dog and analyzed Axel's parody claims as a factor in the dilution inquiry rather than an affirmative defense. Using the familiar statutory test, 15 U.S.C. ' 1125(c)(2)(B), the Board found that all factors supported RIM; Axel's proposed uses of CRACKBERRY were likely to blur the distinctiveness of the BLACKBERRY marks and therefore the Board denied registration for all four classes of goods based on a likelihood of dilution.

Parodic Originality and Public Usage

In denying Axel's registrations, the Board placed much weight on the fact that the public adopted and popularized “CrackBerry” as a nickname for BlackBerry devices. Indeed, prior to Axel's trademark application filings in late 2006, “CrackBerry” had already been in wide use, even being named Merriam-Webster's “Word of the Year” for 2006. The Board stated that such public adoption was the “most important” factor undercutting the parody's effectiveness in avoiding dilution. This holding raises many issues, two of which I will discuss here.

First, originality is generally thought to be the province of copyrights and patents rather than trademarks. See, e.g., Publications Intern., Ltd. v. Landoll, Inc. , 164 F.3d 337, 341-43 (7th Cir. 1998) (“trademark and trade dress law do not protect originality; they protect signifiers of source”). On this view, the question shouldn't be “who came up with the joke” but “do consumers identify it with the registrant?” In RIM, as in most cases applying the so-called “Public Use” rule, the answer seems obvious: average consumer's mental connection with CRACKBERRY will likely be with the senior user's goods. See Nat'l Cable Television Ass'n v. Am. Cinema Eds., Inc. , 937 F.2d 1572, 1577-78 (Fed. Cir. 1991) (“public use by others inures to the claimant's benefit”). But this finding is in tension with the “bedrock principle” of trademark law that rights are acquired by use, not fortuity. Allard Enters., Inc. v. Advanced Programming Res., Inc. , 146 F.3d 350, 358 (6th Cir. 1998). Who should benefit: the parodied mark's owner (who will never use the parody as a mark) or the party attempting to leverage the parody's goodwill for its own commercial purposes?

The second issue is more difficult due to the negative nature of the parody: Is the butt of the joke always (or ever) the correct arbiter for acceptable use? After all, it's hard to imagine RIM ever using CRACKBERRY for its own purposes purely due to the term's significant negative connotations. Take 2011's WHO DAT controversy as a more positive example. In January 2010, the NFL sent cease and desist letters to purveyors of t-shirts bearing the phrase “WHO DAT.” Owners of an earlier “WHO DAT” trademark challenged the NFL's assertions. Eventually, the parties settled and entered into a co-branding arrangement. This cooperative outcome obscures the bigger issue: Should anyone have been permitted to protect the phrase as a trademark? Use of “WHO DAT” by the public, after all, can be traced back to the 19th century. Cf. Grottanelli, 164 F.3d at 808 (finding that “hog” had become generic as applied to large motorcycles before Harley-Davidson began making trademark use of the word and therefore denying injunctive relief). Just because two parties are the only ones claiming a right doesn't necessarily mean either should get it.

Timothy Denny Greene is an associate in the Technology Transactions Group at Morrison & Foerster LLP in San Francisco. He can be reached at 415-268-7568.