This is not the first time Research In Motion has filed suit against a cell phone manufacturer over a cell phone with the word “Black” in it. On December 8, 2006, RIM sued Samsung Electronics Co. over Samsung’s “BlackJack” phones. See Research In Motion Limited v. Samsung Telecommunications America LP, Case No. 2:2006cv07797 (C.D. Cal.); see also news stories here and here published when the Samsung lawsuit was originally filed. That case settled in February of this year. See news stories here and here. RIM and Samsung worked out a mostly-confidential settlement that allowed Samsung to continue to sell the BlackJack phone in the U.S. subject to some unspecified limitations to “help avoid consumer confusion,” but which also required Samsung to withdrawal its federal trademark application for BLACKJACK.
If LG decides to take an aggressive stance, it may have the upper hand. With respect to RIM's attempt to stop LG from selling its Strawberry (pictured above) and Black Cherry phones, given that the terms are usually used in conjunction with the word CHOCOLATE and the fact that the names are more descriptive of the color of LG’s Chocolate line of phones and not likely to be confused with the Blackberry. As for LG’s “Black Label” phone, the first thing that came to my mind was Johnnie Walker® Black Label Scotch Whisky.
Given RIM’s track record, the company is likely to be more amicable to a settlement that will allow LG to continue to sell its phone but under conditions that RIM can claim will allow it to protect its Mark. RIM may also want LG tow withdraw its pending Section 1(b) intent-to-use trademark application for the mark BLACK LABEL. Of course, prosecution on Samsung's application had been suspended anyway by the USPTO pending the disposition of three other pending applications for the marks LABEL MOBILE, BLACK LABEL SOCIETY, and BURBERRY BLACK LABEL.