Yes, Calling A Phone The Black Cherry May Confuse People Into Thinking It's Related To The BlackBerry

from the no-argument-here dept

Fri, Nov 9th 2007 11:31am — Mike Masnick

While we're often quite critical of frivolous trademark lawsuits that are clearly designed to to shut someone up or to try to squeeze money out of someone, there are times when trademark lawsuits are quite well justified. As we've said repeatedly, the real purpose of trademark law isn't about "intellectual property" at all -- but rather, it should be viewed as a consumer protection law. That is, it's really designed to keep Bob's Cola from packaging its bottles up so that people are tricked into thinking they're buying Coca Cola. So, with that in mind, it would seem that RIM has a pretty strong trademark case against handset maker LG, who has been trying to sell new phones with names like Black Label, Strawberry and Black Cherry. The "Black Label" one is more borderline -- as it's hard to see that RIM should be able to control the use of the word "Black" as it relates to any mobile device. However, it's not hard to see people hearing names like Strawberry and Black Cherry on a mobile device and simply assuming that they're somehow related to RIM's BlackBerry. Even worse, LG had apparently wanted to call one of its new devices the BlackPearl -- which is really sketchy, seeing as RIM is offering a device called the BlackBerry Pearl. On this one, we'd say that even the moron in a hurry test suggests that people would be confused into thinking that some of these LG phones were from RIM.

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Filed Under: black cherry, blackberry
Companies: lg, rim

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Chronno S. Trigger, 9 Nov 2007 @ 11:52am

I can kinda see
I can see the Black Cherry causing confusion, I can almost see Black Label, but where douse Strawberry come in? Douse RIM have a device called the snosbarry?
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Duodave, 9 Nov 2007 @ 11:54am

Squishee, anyone?
This reminds me of the off-label knock-offs products that the parents would buy for their kids in "Malcolm in the Middle" or the "Squishee" (Slurpee knockoff) on "The Simpsons".

So apparently it would be OK for Saturday Night Live to do a skit with a fictional product called an "iRack" but it's not ok for a real product called a Strawberry. Sorry, but isn't there prior art for Strawberries?

Personally I think Jack Daniels would be more upset by a product called "Black Label" than RIM would.
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Sal, 9 Nov 2007 @ 12:02pm

Re: Squishee, anyone?
You're missing the point of the trademark. All the examples you have have no basis because they all have nothing to do with trademarks.
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TriZz, 9 Nov 2007 @ 12:03pm

Re: Squishee, anyone?
"So apparently it would be OK for Saturday Night Live to do a skit with a fictional product called an "iRack" but it's not ok for a real product called a Strawberry. Sorry, but isn't there prior art for Strawberries?"

We are talking about trademarks. Prior art concerns only patents.

"Personally I think Jack Daniels would be more upset by a product called "Black Label" than RIM would."

I think Jack Daniels would only have a problem if LG got into the business of selling booze.
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Mike C., 9 Nov 2007 @ 12:05pm

Re: I can kinda see
As far as I knew, the strawberry, blackberry and red raspberry are all in the same fruit family. I can see the confusion over Strawberry being associated with RIM, especially if it's got a red case/cover.
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Anonymous Coward, 9 Nov 2007 @ 12:20pm

Everything in this opinion is rubbish - Bob's cola isn't confusing as regards Coca Cola unless perhaps it used the same packaging and logo style. Similarly Black Cherry isn't confusing with Black Berry (rhyming isn't confusion!). Black Label is a kind of whiskey and Black Pearl is a ship from a movie.
This is all just more examples of Masnick maing sure to maintain his number of "business friendly" stories ... maybe he needs a cash injection.
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Anonymous Coward, 9 Nov 2007 @ 12:22pm

So why aren't they going after Samsung's "BlackJack"??
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chris (profile), 9 Nov 2007 @ 12:25pm

Re: Squishee, anyone?
satire anyone?

malcolm in the middle, the simpsons, and saturday night live are all satire. their product is entertainment rather than the goods they are satirizing.

you can push trademark limits when you are satirizing the product rather then selling a competing item.

if my name is mcdonald and i'm a mechanic, then calling my business "mcdonald's garage" is fine. if i was a cook, then "mcdonald's diner" or "big mac's" probably won't pass muster.
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Anonymous Coward, 9 Nov 2007 @ 12:26pm

Look up:
APPLE COMPUTER, INC. v. FORMULA INTERN. INC., 725 F.2d 521 (9th Cir. 1984)
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Chronno S. Trigger, 9 Nov 2007 @ 12:52pm

Re:
First, the Bob's Cola reference was to another article where Mike made the comparison with Bob having the same collaring, lettering, and stile as Coca Cola.

Second, just because you can tell the difference between Blackberry and Blackcherry doesn’t mean everyone else can. I always figured that if someone was smart enough to see the difference they would also be smart enough to know that not every one is. Thank you for introducing me to a new level on my stupidity meter. Can I call it AC stupidity after you? Smart enough to know the difference, but not smart enough to consider other people before making a stupid generality.
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Duodave, 9 Nov 2007 @ 1:04pm

Re:
According to http://www.law.cornell.edu/background/amistad/7252d521.htm , Apple v Formula Intern concerns a computer kit called "Pineapple" that was essentially a build-it-yourself Apple II. Despite the similar name and function, Formula Intern only sold 49 of these kits.

The court determined that allowing Formula Intern to continue marketing the kits could result in irreperable harm to Apple's trademarks, and ruled in Apple's favor.
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Boost, 9 Nov 2007 @ 1:32pm

Re: Squishee, anyone?
Jack danials doesn't sell any product that is called 'black label'. It is only loosely known to booze aficionado's as 'black label' to differentiat from their green label product. I may be wrong here, not being a scotch drinker, but doesn't Jonnie walker have 'black label'?
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AdityaD, 9 Nov 2007 @ 1:40pm

Empirical evidence
RIM has a point here. My father carries a Blackberry and my mother who is not too familiar with gadgets and brand names insists on calling it a Strawberry. LG is skating too close to the brink here.
By the by, she is not a moron and not in a hurry. A pox upon ye who impugn her intelligence.
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TheDock22, 9 Nov 2007 @ 1:50pm

I can see the basis for the lawsuit
The Blackberry is a widely known brand and there are no other products on the market names after a berry. Strawberry and Black Cherry are also berries, so it is reasonable to assume someone might mistake these for a product from RIM.

Now Black Label I think LG has a shot at keeping, because no one would mistake this as being from RIM (or related to the Blackberry). And as for the Blackjack, this is not a berry, so no one assumed it was offered by RIM to begin with.

I would guess if someone wanted to name their cell phone device the Bon Bon, LG would throw a fit it was too similar to the Chocolate. RIM has a legitimate case here, for once.
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Anonymous Coward, 9 Nov 2007 @ 2:00pm

Re: Squishee, anyone?
I'd be ticked if I wanted a 5th of Jack and they tried to sell me a phone.
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Anonymous Coward, 9 Nov 2007 @ 2:28pm

"Black Cherry" is a no-no. It's DEFINITELY too close to BlackBerry, and I know many people who will be confused. It looks like the idea is sort of based around types of food (in this case fruit), as evidenced by LG's line of "Chocolate" phones. The thing is, there are plenty of other fruits available. Black Cherry is not a good idea.

Oh, and LG, knock off the marketing gimmicks. Naming a phone after a food does not even remotely tempt me to buy the phone. I could probably care less what the phone is called (call it model number PZL635KR-300 and see if I care). I care about what features the phone has, how easy it is to use, etc. As the racing legend Carroll Shelby said about cars, a name does not make the car famous, but rather, the car makes the name. If you build an exceptional car, you could call it just about anything, and people will love it. The same should be true of any product. Make an exceptional phone, and people (for the most part) won't care what it's called, only that it's a great phone.
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another mike, 9 Nov 2007 @ 2:40pm

bring it
"Personally I think Jack Daniels would be more upset by a product called "Black Label" than RIM would."
I think Johnnie Walker would have a better claim, with their own Red, Green, and Black Label Scotch. And LG calling a phone Black Pearl while RIM sells the BlackBerry Pearl is definately over the line.
This comment sponsored by Koko's Cola, preferred by 3 out of 5 great apes over the leading carbonated beverage. Think that would pull a lawsuit?
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steverich, 9 Nov 2007 @ 2:46pm

McDonalds vs. McDowells
You see, they have the Big Mac...we have the Big Mick."
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Donald, 9 Nov 2007 @ 6:40pm

Re:
They did, but settled with Samsung for the dreaded "undisclosed amount".

There wouldn't be a BlackJack 2 if there wasn't a settlement.
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Anonymous Coward, 9 Nov 2007 @ 6:54pm

Read story, it mentions the BlackJack suit
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trademark registration, 9 Nov 2007 @ 9:14pm

Test for Trademark Infringement: Likelihood of Con
The test for trademark infringement is called the "likelihood of confusion" test, which is really a two-part test: (1) How similar are the trademarks; and (2) how similar are the goods/services being provided under those trademarks. In this case, the trademarks look similar, sound similar, and project very similar commercial impressions. Additionally, the goods provided under both trademark are identical, namely, cellphones. Accordingly, it's pretty clear that BLACK CHERRY would likely infringe upon BLACKBERRY's trademark registration.
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Anonymous Coward, 10 Nov 2007 @ 3:01am

Re: Empirical evidence
Are you seriously suggesting that you mother's confusion is such that she could end up purchasing a "Strawberry" thinking it was actually a "Blackberry", and you are of the opinion that it is the "Strawberry" model name that causes the problem ?.
You mother might not be too impressed with your opinion of her if she ever reads techdirt !.
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Rob, 10 Nov 2007 @ 5:26am

Sue and be sued.
I originally though that the Blackberry was made by Apple because it was named after a fruit.
If RIM can sue on the similarity of name perhaps Apple could as well.
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Anonymous Coward, 10 Nov 2007 @ 2:33pm

Re:
If you are so smart and understand that the car that makes the name not the other way around, how can you also claim that the names Black Cherry and Black Berry are too close ? - you wouldn't be even slightly fooled would you ?.
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straif, 12 Nov 2007 @ 7:52am

Re: Squishee, anyone?
Personally I think Jack Daniels would be more upset by a product called "Black Label" than RIM would.

Or perhaps Johnnie Walker.
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dualboot, 12 Nov 2007 @ 8:14am

Wow
Let's not all cry at once here...

Okay... someone saying that Black Cherry and Black Berry are completely different... I only disagree because as a former phone salesperson, I know that when a company comes out with a variation on a phone, they often make slight changes to the name. Take into account the RAZER and the CRAZER. One is the ultra-thin flip phone, and the other is an ultra-thin phone with some additional features which I don't recall (I don't like either one). Both are Motorola. When I read the name Black Cherry, I (prior to reading the article) thought that it was a new version of the BlackBerry, and perhaps had a different feature or two. I didn't think the same of the Strawberry, which I immediately associated with the Chocolate (I guess LG would like that mental association). I'm not sure why I associated it with the Chocolate... probably because it's a color. The Chocolate is a chocolate colored phone. I can see, though, how some people who aren't very familiar with the Blackberry would associate the Strawberry with a red or pink-colored blackberry. Would it still be a blackberry if it was blue... or would they call it the Blueberry?

My point is... you have to understand that even though YOU might have a blackberry and be able to easily tell it apart from other high-featured wireless devices, doesn't mean that someone who's loved one said they want a blackberry for christmas would remember the exact fruit name if the first thing they saw when walking into a wireless store was the Strawberry. This is especially true at Holiday time, when I often get a list of things that my nephews want, and end up having to call their parents from the store because there are 8 things that I think might be the "perfect toy" that's on my mental shopping list.

Black Pearl... I didn't know blackberry was coming out with a "Pearl" so I immediately associated this phone with the "pirates of the carribean" movie, and thought it would probably have some themed content and/or a casing that reflected the themes in the movie... such as a picture of the ship as the wallpaper, and a picture of captain Jack Sparrow on the carrying case.

While we're on trademarks... what about the Touch and the iTouch.... Samsung and Apple... I bet we'll see them here next.
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Taylor O, 12 Nov 2007 @ 1:45pm

Pirates of Mobility
Darn, I was planning on starting a Pirates of the Carribean MVNO called the Black Pearl... there goes my dream.
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JT, 12 Nov 2007 @ 3:04pm

DEFINITELY infringement
I've been in the mobile telecom business for roughly 15 years.

RIM definitely does not have exclusive rights to a qwerty-style email / web mobile device.

But the DO have the right to protect their product names. I definitely consider RIM's claims against Samsung pertaining to the 'Blackjack' 100% valid AND ENFORCEABLE by word of the law. Samsung is parasitic-type company, rarely innovating, mostly mimicking its Western, more innovative counterparts (Remember the 'Blade' brand name they put on their at-the-time thinnest phone intended to compete with the RAZR? Hmm.)

I support meaningful penalties against Samsung to end their *intentional* attempt to create 'brand confusion' to increase their own sales.

Want proof? I met a guy recently (smart, venture cap person, not some dolt who doesn't know anything about technology) that said "so the Blackjack that's a new Blackberry product?"
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Allison Frederick, 26 Nov 2007 @ 5:47am

Marketing Department Getting Lazy
The LG/Blackberry suit is an example of a marketing department/product labeling department becoming so enamored by the competition's home run that they can't think of any other name for their own product other than to slightly deviate from the competition.
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Anonymous Coward #42, 22 Oct 2008 @ 11:35am

I can solve this problem in a single statement:

HIRE MARKETING PEOPLE WHO CAN COME UP WITH ORIGINAL NAMES, SHEESH!!!

It's so obvious that there's a copy-cat thing going on here. If the most imaginitive names you can come up with for names of cell phone models are names of fruit, then you deserve to be slapped with a lawsuit. I may have hated the RAZR/KRAZR phones from Motorola, but the names were definitely unique, and there's no mistaking them for a phone from a different manufacturer. C'mon LG, you're better than this. Get some real names.
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