Trademark Authority Rejects the Parody Argument in the Legal Battle Between BLACKBERRY and CRACKBERRY
In a series of recent decisions, the Trademark Trial and Appeal Board (TTAB) has reaffirmed its stance on parody defenses in trademark cases. The focus of the TTAB remains on protecting trademark owners’ rights and preventing consumer confusion, rather than on balancing free speech or fair use issues.
One of the most recent cases involved the opposition to the registration of the mark CRACKBERRY by the Blackberry trademark holder. The TTAB rejected the parody defense, stating that it is generally not recognized as a valid defense to trademark infringement or likelihood of confusion claims in TTAB proceedings. The Board emphasized that the likelihood of consumer confusion is a dominant factor over the First Amendment rights.
In another case, the U.S. Court of Appeals for the Federal Circuit blocked Adidas from registering a trademark that sounds confusingly similar to a trademark registered by a small church. Interestingly, the church's trademark was registered before Adidas's attempt, highlighting the importance of priority in trademark cases.
The TTAB's stance on parody defenses contrasts with some court decisions, such as the Starbucks v. LessBucks case. In this case, the defendant used a similar mark in a way that courts examined for parody or fair use, and certain courts have allowed parody defenses if it is clear to consumers that there is no sponsorship or affiliation, reducing the likelihood of confusion. However, the success of such defenses depends heavily on the facts and the courts' balancing of trademark rights against free speech.
Another example is the Clothes Encounters case, where courts evaluate likelihood of confusion and whether the mark dilutes the famous mark or harms its reputation. Parody may weigh in favor of fair use but is rarely dispositive if the mark still causes confusion or dilutes a famous mark’s value.
Kylie Minogue also filed opposition to Kylie Jenner trying to trademark the word "KYLIE" in 2016. Minogue opposes the trademark on the grounds of priority, but the current status of this battle is not known.
In a different case, the TTAB recently rejected an attempt to trademark the color yellow for Cheerios boxes by General Mills. The TTAB's decision was based on the fact that the color yellow had become so synonymous with Cheerios that granting a trademark would likely cause confusion in the marketplace.
This emphasis on consumer protection and trademark rights is a consistent theme in TTAB decisions. The Board's focus remains on preventing confusion and protecting the value of registered trademarks, rather than on free speech considerations.
[1] Trademark Trial and Appeal Board (TTAB) issues decision on opposition to CRACKBERRY trademark registration. (2021). [link]
[2] Court blocks Adidas from registering confusingly similar trademark. (2021). [link]
[3] Parody defenses in trademark cases: An overview. (2021). [link]
- In the case of CRACKBERRY, despite the potential for parody, the Trademark Trial and Appeal Board (TTAB) refused to recognize it as a valid defense, emphasizing the importance of protecting trademark owners' rights and preventing consumer confusion in business and finance.
- Coincidently, the TTAB's decision to block Adidas from registering a trademark that sounds confusingly similar to a small church's trademark highlights the Board's focus on priority in business and technology, rather than on free speech or balancing fair use issues.
