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RIM deals from both sides of the deck, gets BlackJack

The same company famous for it's defense of IP transgressions on its underlying technology went on the offensive against Samsung, alleging that the BlackJack smartphone was too close in name to its famous BlackBerry:

http://www.pdablast.com/articles/2007/2/200728-RIM-Settles-Trademark-Case.html

I think quick settlement was the obvious option for Samsung, maybe learning a lesson from RIM's extended dispute with NTP, given the factors laid out in the TDRA for blurring:
1. The names are similar in their first word, the fact that they are two conjoined words, the fact that the first letter of each word is capitalized.
2. BlackBerry is inherently distinctive in the sense that it is an arbitrary name for a phone.
3. BlackBerry is engaging in exclusive use of the mark within the relevant industry, and aggressively polices use of similar marks (brought suit against a NJ toy maker incorporating the word "berry" into childrens' organizers)
4. The BlackBerry name is highly recognizable as the name of the RIM handheld and has arguably attained "household word" status (or infamy).
5. It is likely a court would find that Samsung attempted to create an association with the famous mark. Looking objectively at the name and the product (smartphone with querty keyboard, similarly placed- and colored buttons, similar functionality) it would appear that Samsung wanted to create an association with BlackBerry to compete directly in the market.
6. Actual association? The products target the same tech-savvy, educated professionals group that is arguably less likely to make false associations between these two products. For example, the differences in operating systems might preclude association more than name would link them. However, BlackBerry could probably rely on long-time user Paris Hilton to truthfully testify about any confusion leading to misassociation.

Good move, Samsung.

Posted by at February 11, 2007 5:23 PM in Current Events