Thursday, November 8, 2007

Blackberry maker Research In Motion files trademark infringement lawsuit over LG Electronics’ “Black Label” cell phone.

Blackberry 8800

According to a report yesterday by Bloomberg (link here), on November 7, 2007, Research In Motion Ltd. (“RIM”), the maker of the widely successful Blackberry cell phone, filed a trademark infringement lawsuit against LG Electronics, Inc. (“LG”) in the U.S. District Court for the Central District of California, alleging that the name of LG’s “Black Label” cell phones is confusing similar to RIM’s BLACKBERRY trademark for its cell phones. See Research In Motion v. LG Electronics, Case No. 07-7323 (C.D. Cal.).

LG's Black Label II

In addition to RIM seeking an injunction to stop LG from selling its cell phones under the name “Black Label” and seeking the usual damages for infringement, RIM is also seeking an injunction to stop the sale of LG’s Chocolate handsets that Verizon Wireless apparently sells under the names Strawberry and Black Cherry (click here for story about these colors).

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.

RIM’s eagerness to corner the market on the use of the words "black" and "berry" (or other fruit) with respect to cell phones may have something to do with the fact that RIM last month announced that after years of bureaucratic RED tape, it had finally been granted permission to sell its phone in China where one of its competitors is the government-run telecommunications company, China Unicom, which operates its own wireless e-mail service called “Redberry.” (story link here). RIM may be trying to limit the number of cellphones out there using the words "black" and "berry" so that its cell phone (and the source of such cell phones) remain distinctive among the millions of cell phone users worldwide.

LG's Strawberry Chocolate Phone

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.

Goes down smooth...

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