RIM vs. Samsung
 

Apparently one company, American Cell, who's based out of California and sells the BlackBerry Pearl, got the device confused with the BlackJack by Samsung. That's why RIM is Suing Samsung over the name BlackJack (info taken from RIMarkable.com).
For the link to American Cell's boo-boo click here


http://www.rimarkable.com/images/bla...-blackjack.jpg

I am sure they will fix it soon so I don't think the link will not work very soon.

The name is very similar and they may win this case. Or they may settle it out of court.

yeah but BLACK BERRY is unfuggwitable because of the "Pin 2 Pin" thats why I got it!!!!

Robb from RIMarkable has a mention of this in his blog. This will certainly add more fuel to the battle between RIM and Samsung over the Blackjack name.

Example of why RIM is Suing Samsung over the name BlackJack | RIMarkable | The official, unofficial BlackBerry Weblog

I have mentioned it in my original post...
Samsung is a BIG and clever player in this market...

And I always get confused between Lexus the car and Lexus the legal search tool....

If it didn't run WM5, I'd be tempted to purchase the BlackJack. It seems as if Samsung thought they were being clever, turned out it's going to bite them in the butt. However they had to have known this was going to happen if they named it this, therefore it leads me to believe they have something up their sleeve. Why would anyone set themselves up to lose money like they're about to?

So let me get this straight. Balckberry is upset because Samsung names one of their phone the Blackjack? HA!

I can't see RIM winning that battle and they better look twice as Samsung is HUGE and can afford to fight that winning battle!

A clever ploy to get free publicity at probably nominal cost overall.

Yeah, RIM will loose this one if it goes that far - blackjack is not close enough to blackberry.

First, RIM may or may not *lose* (only one 'o' in that word!), but there is legitimate basis for a suit. Given several reports of actual confusion by consumers, RIM does have a decent chance of winning or persuading Samsung to settle. IMO, of course. But I am an IP attorney by day (and many evenings!) so I have some idea of what I'm talking about.

I disagree with the ip attorney. RIM doesn't stand a chance and needs to back off.
Blackjack is a card game or a weapon. Blackberry is a fruit.
What's next? RIM going to patent any device that starts with the word BLACK*...

There is no similarity.
And if anyone confuese the word BLACKBERRY with BLACKJACK then they must have been living in a cave for the past several years. BLACKBERRY is such a well known term...

I tend to agree. Thus far the mistakes that were made between the two phones (Blackjack and Pearl) were made by cell phone providers (such as the one I mentioned in the first post with a link). Samsung could argue that cell phone providers need to pay closer attention to the product they sell.
Blackjack and Blackberry aren’t that close by name and certainly not close by their meaning (although Blackjack is also "a black variety of the mineral sphalerite or zinc blende" which is somewhat related).
The phones themselves have some similarities but many phones look alike.

Yea, I could see them suing because it's very very similar, but not over the name.

Some consumers will always be confused. I simply do not think RIM has a chance of getting a penny. Attorneys will sue for anything if they think they can make money.

Feel free to disagree with an IP attorney who actually deals with trademark infringement. I guarantee your uninformed opinion won't sway any court.

The issue here is that the names *are* confusingly similar for related goods and services. In that respect, Blackjack and Blackberry are similar enough to create likelihood of confusion. There are already several reported cases of *actual* confusion, which is strong evidence in a trademark suit. It doesn't matter *who* is confused, because Samsung is the entity that selected the Blackjack name that is leading to confusion.

So, your lay off-the-cuff opinion notwithstanding, there clearly *is* similarity and RIM does have a viable legal basis to bring suit. (Need I remind you of the rights that have been secured for "Mc-anything"? :) )

iDisagree :razz: 8-)

Exactly. I agree

*moved to RIM Stock/Legal Discussion forum and edited title*

I litigated enough IP cases to know a little about this.

First, it looks as though it's the vendor who made the goof, calling the Black Jack a Pearl. It looks like a small time vendor, so I can see them getting confused. But could be a fraud attempt since many consumers would assume that the Black Jack was in fact "the Pearl" everyone was mentioning.

Second, as to Samsung, it's a close call on the names. But there certainly is enough of a basis for RIM to sue [meaning the suit would survive a Rule 11 motion].

Historically, there are many, many cases where businesses have won lawsuits protecting their trademarks, but there are also some BIG losses.

Monster cable has won many lawsuits against businesses using the word monster in the name.

McDonald's has won and lost some. E.g., they lost a suit against an individual whose name was "Big Mac." He had the domain name "bigmac.com" and McDonald's sued him for infringement, but McDonald's lost because the guy's nickname was "Big Mac" and the Court said his domain name was not an attempt to squat or hold hostage the name so he could sell it to McDonald's.

I recall a small business that sold falafel, was named "Falafel King." Burger King successfully got the owner to change the name because, BK argued, people would think that Falafel King was somehow related to or run by BK.

Microsoft sued an alternative OS called Lindows for trademark infringement saying among other things that Lindows confused the public into thinking that it was Windows related or a product sold by MS.

End result, MS settled for over $100 million because the Judge had indicated that he was inclined to rule that Windows was NOT a protectible name, nor was it a trademark. Rather than risk a judicial ruling or precedent that Windows could not be a trademark [too common a word], MS settled by paying money to the people it sued.

Trademark is one issue, trade dress is another [an item made to look similar to a more established product so to confuse the public into thinking they are buying the more established product, such as Gallo wine or SanDisk memory chips].

The issue here, with the word "black" in the name, will the public be confused into thinking they are buying a BlackBerry when in fact they are buying a Black Jack?

The foundation of a good case is there since both devices are smart phones. It also seems that Samsung's bad motive is present. Of the zillion names one could choose, why pick a name with the word "black" in it? One might also wonder about Samsung's motive when that one vendor was either confused or did in fact use the term Black Jack to fool consumers into thinking they were buying Pearl phones.

They already fix the page.

lol...asking a lawyer if RIM has a "case" is like asking your kid if they like candy.

you can sue anybody for just about anything in this country (i heard on the radio today someone tried to sue God for losing his job haha)...whether you win or not is a different story.

this case reminds me of the case where BMW sued Infiniti for using the letter M in their name (BMW's M-series vs. Infiniti's M35/M45). not sure how that went.

RIM is prolly just trying to differentiate their products to the market/masses and lawsuits are relatively inexpensive way to do so.

from a consumer point of view though, this is a pretty frivolous lawsuit. it makes it look like RIM is afraid of a little competition or worse RIM doesn't trust the consumer to differentiate between BlackJack and BlackBerry products.

makes me think twice about getting any RIM product (was considering 8800)...maybe i'll wait for the ePhone instead. :-o :oops:

JMHO

I call it the iPhone but what the heck: I'll wait too...lol

RIM has to sue. If you hold a trademark, it is the holders obligation to vigorously defend it or lose it, not only to competitors but into the general lexicon. if RIM doesn't defend it "Blackberrying" could become a general use term and any phone that has a competitive system could use the expression such as "for a Blackberry experience, use our phone...". Or such.

With such a negative attitude about lawyers and our justice system, you must have had a bad experience with lawyers and the courts. Regrets for that, but while it's fashionable to slam lawyers or insult the profession, on this Forum and thread, the shotgun criticisms of lawyers and the profession are irrelevant.

Remember that if RIM sues Samsung, it's RIM who retains the lawyers to represent them in court. The lawyer is not the one deciding to sue, RIM is the decision maker. This is the way it has been for hundreds of years.

In big business, high stakes litigation, lawyers merely advise and then tell the client the various options it has, from doing nothing to suing. Ultimately, it is the business entity, not the "candy loving" lawyer, who makes the decision to sue.

While some businesses will sue the competition as a business strategy [hence, they look for any way to sue, no matter how frivolous the reason], in IP cases [intellectual property], which is the subject of this thread, your point is misplaced.

In other contexts your "anybody can sure anyone for anything" statement may be accurate. In fact, I have said words similar to yours to many an inquiring client who wants to know if he or she will be sued or counter-sued.

*end*

it was actually cingular not samsung who named it the blackjack its an i6something or another

Still they would much rather go after a rival producer rather than a favorable middle mann carrier also they could easily prove that the manufacture prduced it an tht was the final model name BEFORE being distributed bu cingular

actully that instance could win it for them

I'm reminded of a lawsuit of a few years back between wizards of the coast (which is a subsidiary of hasbro) versus Konomi. The lawsuit wotc filed basicly statate the the notorious ccg produce by konami Yugoh. Used a card type in the gam Called MAGIC cards. The was als an expansion called MAGIC ruler.
Wotcs prmary prduct is the oldest and longest running ccg called MAGIC the gathering.
Wotc the plantiff won the case

As a rusult konami was forced to stop using the term Magic card an was forced to use the term "spell card" and the set was to from that point on Magic ruler was to be refeerd to as Spell ruler.

Point is Blackberry black jack

The same thing is about to happpen

In a related news, another Korean phone maker is going to release the MOKA phone.. Hey, it's just a variation of mocca.. you know..

To clarify (and add to SF's remarks above), I was actually speaking to the merits of the claim (which are present, I assure you), and not just chasing ambulances. ;-)

Also, keep in mind two things:

1) It will cost a company around a few million dollars to pursue such a lawsuit. So such decisions are not taken lightly. Suing someone for the heck of it is not a "free" activity, and is generally not done indiscriminantly.

2) If a company lets someone use a similar name or logo, etc., and doesn't try to protect their rights, it creates a slippery slope which can allow others to use even more similar marks, until the brand identity is lost. Federal trademark dilution statutes were very recently broadened (requiring proof of only a likelihood of dilution of a mark rather than actual dilution), so the government, businesses and the IP profession understand the importance of this, even if a lay forum poster does not. :shock:

I don't see where RIM has a shot. What is trademarked about "Black"?

I agree with SanFranciso.

I'm a senior in college majoring in business. We are required to take a Business Law (431 level) class, and we talked about this issue.

SF is exactly right about the distiction between Blackberry and BlackJack.

Our law teacher (who is a lawyer and teaches for fun at the university), told us several occasions where this came into play.
One example: Starbucks coffee sued another coffee company called "Charbucks". The jury had 100 people surveyed to figure out if the public was confused as to which they were drinking? Starbucks lost.

I think if the jury figures out if they know the difference between a Blackberry and a BlackJack, an answer will be found.

And, if they are in different industries it doesn't matter if they use the same name, but in this instance, it is in the same industries in the same competiting market. So a case can be filed.

On the surface this dispute may sound frivilous to some but as I stated prior and as DrMoze put it in a similar, yet more legalese way, RIM must defend itself from anyone even coming remotely close to infringing on its intellectual holdings (read: trademark) or face the possibility of losing the exclusive use of the name Blackberry. This is what this action is all about.

There are at least three outcomes that I could predict:

1. RIM loses. Based on the fact that the names really are similar, the products are similar and there has already been major confusion, I don't think this is likely. RIM will have a pretty easy time of it proving that Samsung acted intentionally and in bad faith given the similarity of product; they look alike and the name is close. Samsung is certainly doing some hitchhiking here. They didn't develop the name in a vacuum.

2. Samsung can continue to use the name Blackjack but it has to fine print its marketing to state that "a Blackjack is not a Blackberry, Blackberry is a product made by RIM.....". This is a very high possibility. Samsung saves some face and RIM gets free advertising. Even though this is not an attractive alternative to either party, I would think its a high probability. Its easy enough that a judge would love it.

3. RIM wins outright and Samsung has to pull the name. Also a high probability. Samsung will have to do some penance.

Even though I feel RIM has the high ground on this issue they have already lost something. At least half of the people in this thread think that RIM is the "bad actor" and they are bullying poor Samsung. Right or wrong, its easy to view the plaintiffs as the bad guys, simply because its the way it plays out. I love to hate Mickeysoft and every time they go after someone I always root for the "David". Once again, right or wrong.

Come on!!

To state that, "lawyers merely advise" is fast footwork.

In a client attorney relationship the lawyer is the sophisticated party. While it is technically true that the client must give the final nod, it is based on the input from the attorney and what the attorney says, carries the weight in the decision to proceed or not. At the very least, every client, no matter the size of the action, asks the ubiquitous questions, "what are our chances, what should we do?" Legal advice often includes very strong opinion, at least it does if your attorney is looking out for your interests.

In the case at hand, the attorneys, both in and out of house, likely have said to their client, RIM, "in this case it isn't a question of whether to proceed or not, in order to protect your trademark, you have to go after Samsung." While that could be construed to be advice, its pretty strong advice.

While I believe you are defending the profession from the shyster label I don't think you have to understate the actual influence an attorney has in the decision making process.

Not true. Samsung calls it Blackjack.

Samsung BlackJack

I have to admit, I'm rather astonished at this discussion. This is the legal discussion forum and you folks don't seem to want to hear or give credence to the input from the actual IP attorneys. Do tell your doctors they're full of it when they offer their diagnosis? Come on people.

Likelihood of confusion and acts of actual confusion by the public are key points in a trademark litigation. I too, am an IP attorney, btw, though I don't spend much time with trademark issues. The fact that you-all, personally, are not confused is not the issue at all. You are not the public at large. You are sophisticated blackberry consumers and know exactly what is and is not part of the blackberry product line, down to the letter designations for each supplier. Of course you-all aren't confused.

The outcome of a case is never certain. Although I would hope and expect that they sought the advice of outside counsel, RIM is a sophisticated client and, at this point, should have a pretty good idea of what it's doing in the IP arena. They aren't going to be talked into a "frivolous" litigation by some shyster. They'll have made an educatated and calculated decision driven by both IP and business considerations, only some of which we outsiders may be able to surmise.

I will offer no professional opinion on the merits. I don't have all the facts (and if I did, I would probably have an obligation to keep my opinion to myself). As noted, however, RIM probably has little choice about whether or not to pursue it. A trademark certainly has use it or lose it aspects.

Blackjack is one ugly phone.

Me too, they changed it to lexis though :razz:

I've been watching this thread, but haven't said anything until now. I won't try to argue IP law with IP lawyers, it is what it is. Only thing I WILL say is I think the whole thing is rather ridiculous and an indication of what's wrong with our legal system if RIM now can stop a rival company from calling a device "Black[Anything]". They may be able to, but I totally disagree with them being able to do that.

It's a lot more complicated than that. By choosing the name blackjack, Samsung is, arguably, taking advantage of a name and goodwill associated with the Blackberry name. -Things that, unlike RIM, Samsung has not spent years cultivating and paying for. Moreover, the device itself, and the services associated with it, may not have the same features, quality and support as a Blackberry -nor will RIM have any control over what happens with the blackjack. If the blackjack turns out to be inferior in any way, is supported inadequately, etc., that negativity will flow back to the Blackberry name and harm RIM. -all because of the confusion in the consumer's mind between the two. It isn't so much an issue of the fairness to Samsung or others in keeping people from using a name of their chosing, its a question of the fairness of subjecting RIM to harm (actual and potential) while another party takes advantage of the Blackberry name.

RIM is unlikely to be able to stop any random product from being called a black___. You want to name your new hammer "the blacksmith," RIM isn't going to give it a second thought and the law is unlikely to give them the ability to stop you. When it's a product in a similar market niche though, it's another matter entirely.

I guess I see it the other way. In my view, it would be ridiculous if RIM couldn't do something about it.

I didn't expect you to agree with me, and I emphasize again I'm not arguing with your expert opinion on the merits according to our legal system. But my opinion stands that its a bit ridiculous and symptomatic of what I and a LOT of other people think is wrong with our legal system today.

You said "By choosing the name blackjack, Samsung is, arguably, taking advantage of a name and goodwill associated with the Blackberry name." My response to that is that yes, that's definitely "arguable" as I don't believe the name "BlackJack" has EVER been associated with the BlackBerry name, prior to Samsung's intro of this phone. Before Samsung came out with this phone, I doubt you could have found a single individual who would have associated that name with BlackBerry. If "BlackJack" was a nickname associated with BlackBerry prior to Samsung's intro, then I'd think there should be a case - just like if someone came out with a phone called "CrackBerry" because that is a name that HAS been associated with BlackBerry.

I'd be willing to wager that if you polled a large group of people at random, that probably not more than 1 in 100 of them would associate "BlackJack" with "BlackBerry". The people polled would separate primarily into two groups - those who would have NO idea what either name was referring to, and those familiar with BlackBerry - and the huge majority of THOSE would know that RIM has never had anything called or labelled "BlackJack." The fact that a very FEW *dumb* consumers would mistakenly associate the two (this includes the single *dumb* online reseller) shouldn't be enough to force Samsung to quit using the name. And taking the same poll I mentioned earlier I'm sure you could also find, for instance, a few *dumb* consumers out there who would claim that *any* QWERTY phone/PDA that's black is a "BlackBerry", so does that mean that based on our legal system no other company should be allowed to build and sell a black QWERTY PDA/phone device? Should RIM be allowed to take legal ownership of anything and everything "black" associated with phones or PDA's? Hardly, I think!

I think it is a combination of a 2 things.

First, the name, yes, the name "Black" is the main issue. Why didn't Samsung call it "Yellow, Red, Green, or Blue" Jack? Huh? Is it because the color is Black? Probably, but how many BlackBerries are Black? Or are they Berry colored? And, how many times do companies change the color of the phone to increase sales by different marketing strategies.

For example: Look at Apple. They made the iPod, then the made the iPod in LOTS of different colors, because that increased the popularity depending upon what each person likes. It's a HUGE marketing project that WORKS!

Now, after thinking of all that....it makes me wonder why Samsung didn't name the phone "Jack"? Why did they have to add the adjective Black to the name? To make things difficult with BlackBerry? Or just to confuse people in thinking they are buying something comparable to Blackberry and steal their potential customers. It's all a marketing deal for the company.

2nd concern is regarding the look. Yes, they do have similarities to me. If you took off all the lettering, could the public determine which is a Blackberry and which is a Samsung? I don't think so. Only your up-to-date phone geeks (including myself) could look at a phone and know who made it, what company provides it, and what it is capable of doing with our EYES CLOSED!

*I don't know if I'm allowed to do this but, here they are side by side*





http://www.cingular.com/global/MEDIA...lackjack-l.gifhttp://www.blackberryforums.com/atta...ide-indigo.jpg

I love my Blackberry but at the same time...I hate stupid and frivilous lawsuits. I hate to say...I hope RIM loses.

Uhh, yeah, I'd say because the phone is black! And, this is not a debate about whether Samsung should be marketing the phone in other colors. The lion's share of all phones/PDA's out there - particularly the PDAs - are either black or silver - BlackBerry or not.

Well yeah, they do have similarities. They both have QWERTY keyboards, red/green phone buttons, a central nav keygroup, and a screen. Surprise surprise! So I maintain the only part of the public that would think they were made by the same company are those that would say that about ANY two QWERTY PDA's - and there are certainly other black ones out there that have as many similarities as the BlackJack - so I'd say that argument is a bit of a red herring, but that's just my opinion.

To summarize, I have a pretty strong philosophical opinion that RIM should not be allowed to, in essence, trademark the word "Black" with respect to any phones or PDA's. That's what a victory for RIM would amount to here. I simply don't believe that's right and I agree with the previous poster - I hope RIM loses!

A lot of people share your view and I think that makes my prior comment valid that there are no winners in this action. Even if they prevail, RIM is perceived as the bully, right or wrong. Its hard to keep moral indignation out of public bloodletting and rightly so. There are always two courts to consider, one is the court of public opinion, and reading this thread, it would appear that RIM is losing in that one. In the NTP vs RIM affair, it was just the opposite, NTP was viewed as the bad guy and RIM was being innocently persecuted. RIM got spanked pretty good but won in the sympathy vote.

We have to have laws for protection of intellectual property and in order to enjoy the benefits of holding a trademark you are required to aggressivly defend it from encroachment, no matter how tenuous the thread. If Blackjack slides by why not Blue berry and then on and on until the Black Pearl, or the "Crackberry?" What happens next is the XYZ Inc. Blackberry. Where is the line drawn? I'm not sure that in any case anyone really knows. We do know that each side as an opinion on it. I do and I think Samsung is liable.

As I put it earlier in this thead, Samsung didn't come up with the name in a vacuum. They knew what they were doing and what the consequences may be. There big, not stupid and a pretty sophisticated marketing company. They must have felt the risk was worth the reward.

If the details of what are to transpire come out I think you'll see many of the points you posted come out as arguments. Stay tuned. I believe I read that RIM has sought injunctive relief so maybe this will heat up quickly and fast track in the system. I hope so. I get a kick out of watching these kind of things play out.

A bit off topic but for many years RIM enjoyed their niche position in the market, virtually no competition. They are now incorporating a consumer slant in their business model, they're successful, growing and given the fact that the Blackberry is the king of mobile email, this Blackjack thing is only the first of many to come. Hell, even Bill Gates is going to put a shot across their bow with MS push email services. Do we think that Jack Bauer will have a BB on his hip 2 years from now? I dunno, but whatever Jack totes, I gotta take a serious look at. If I don't, he'll kill me.

For those of you who think that such a suit would be frivolous, just look at history. There are thousands of products that have names protected from competitors ripping off others hard work. Many items we identify by an established brand name even we are using an alternative product. Look around you for examples:

Kleenex, while others have to be called "tissues."

Band-Aid, while others have to be called "bandage."

Reynold's Wrap, while others have to be called "aluminum foil."

Tupperware while others have to be called "plastic container."

Vice-Grips while others have to be called "locking pliers."

Teflon while others have to be called "non-stick coating."

Vaseline while others have to be called "petroleum jelly."

Vicks while others have to be called "menthol rub."

Post-It Notes while others have to be called "adhesive or sticky notes."

Q-Tips while others have to be called "cotton swab."

In all of the above examples, manufacturers have policed competitor products to make sure that the name of the competing product does not imply or confuse the public into thinking that they are buying the already established, usually better quality, item or product.

I can assure you that lawsuits related to protecting any of the above have not been deemed frivolous by the courts. Rip-off artists have not gotten away with even the slightest attempts to confuse the public [e.g. "R-Tip swabs," "Post-Em Notes," etc.].

The law protects manufacturers via patent, trademark and copyright laws in recognition of their hard work in research and development, marketing and other efforts in bringing a product to market.

The law recognizes that there will always be those who attempt to compete unfairly by ripping off one's ideas and successes. The thieves range from individual low lifes to countries [former USSR and China, for example].

Have you seen the degree of "ripping off" of U. S. products that occurs in China, because U. S. laws and courts have no jurisdiction in China [obviously]. It's almost comical the names of the products that the Chinese place on products so to confuse people. Of course, I am not even taking into account the huge number of counterfeit products the Chinese make [many of which make their way to the U.S. via eBay, brick and mortar retail, and on line stores].

The 195 million people to whom the newer BlackBerries are marketed to [non-professionals] can get confused by the device names. I know many educated "non-geek" people who would not know squat about the differences between the BlackBerry, 8800, 8100 or Black Jack. Many would go into a store and say something like "I saw this phone on TV. Do you have it? It's black and shiny. It was called 'black' something or other."

Those of you who have said that a RIM suit would be frivolous don't understand any of the above nor do I suspect you have created anything of value that you have had to protect others from ripping off.

The closest to that concept you might have experienced is a college paper. How would you have felt if a fellow student's final exam essay had a catchy title very close to the title you thought up? What if the paper's content clearly indicated the student simply reworded your paper's theme and research. Would you have thought it was frivolous to complain to the professor about the student ripping off your paper?

And to anyone who posted on this BlackBerry related website that they hope RIM loses the lawsuit, that's ridiculous.

RIM is not trying to trademark the name "black." They are trying to protect the name "BlackBerry" as used in the cell phone, PDA and smart phone market.

These lawsuits are complex and deal with volumes of law that is on the books. I suggest you look up the files before being so quick to say that you hope RIM loses. The claims are more complex than can be decided from one's armchair and viewing a few "sound bites."

Your profile says you are in software sales and consulting. With the amount of ripping off that goes on in such an industry, I am surprised that you want RIM to lose the case.

SanFrancisco, excellent product list but you missed the information age classic: Xerox.

Of interest is that all of the brands you have mentioned have managed to keep their identity by diligent, hard and often costly work. Many of the brands are firmly entrenched in the lexicon yet they still survive. We don't ask for adhesive bandages, we ask for Band-aids. We Xerox copies. We ask the druggist for Q-Tips but buy generic cotton swabs. In my dotage, I fail to remember the specific details but I do recall that there have been lost trademarks due to the common use of the name. You can tell me if I'm wrong but didn't IBM lose the name "IBM PC?" Not the IBM but the PC part.

Counselor, I'm disappointed, I'd have expected in your profession that you would be a little better at reading for comprehension. I guess you missed where I said that they would be *IN ESSENCE* trademarking the word "black" as pertains to the cell phone, PDA and smart phone market, and where I said "that's what a victory for RIM would amount to here." So, since you're trying to make the argument that they're NOT trying to trademark the name "black" as pertains to the cell phone, PDA and smart phone market - your assignment is to report back on what name(s) incorporating "black" in any way would be acceptable on a competitor's phone, should they win? (Hint: If your answer is "none", then they will have *IN ESSENCE* trademarked the word "black.")

Thanks SO much for all the "I'm-smarter-than-you" condescending drivel. You have no idea what I do or do not understand. I never said I was in a position to "decide the claim." I stated my opinion, and I'm entitled to that opinion, even *IF* I dare to disagree with the all-knowing attorneys. I VERY pointedly did NOT try to argue with the legal opinions stated by you or other attorneys. I'm certainly not the only one around with this opinion, and as GMK already stated, its quite possible that RIM could be significantly damaged in the court of public opinion even if they win this case.

I *DO* understand that in today's legal system RIM does have a chance of winning this. I also understand that of the entire product list you stated, there's one KEY difference - not ONE of those product names incorporates the commonly used, every day name of one of the basic colors, to which the company is trying to establish de-facto trademark ownership within an entire industry segment. And finally, I understand that the one who stoops to name-calling by calling his debating opponent (or the opponent's views) "ridiculous" and other demeaning statements - usually is the one with the weaker argument.

Well, you said RIM is in essence trying to trademark the work 'black' ..... I tried to get the Complaint through my Pacer account, but it has not been posted yet. I think a reading of it will help in understanding the nature of the claims.

You won't find any statements in their papers that implies RIM is in essence trying to trademark the word "black" as such relates to cell phones. I suspect the claims mostly deal with infringing conduct, trade dress, and unfair competition as such relates to all of Samsung's conduct, not just use of the term BlackJack.

As to my comment about it being ridiculous to hope RIM loses, such is my opinion. I think it's absurd for someone who uses RIM products to hope that the Company fails in its efforts to protect the Company and its assets, including the devices you are using. Kinda like a police officer watching the COPS TV show and rooting for the bad guys.:razz:

I don't doubt that in all the legalese of the Complaint that it doesn't use such plain and easy to understand language as to say that they wish to trademark the word "black" with respect to the cell phone/PDA industry. But let me rephrase the question and direct the witness to please answer the question that is asked. :razz:

If RIM should win this case, will or will not the direct result be a "de-facto" trademarking of the word "black" with respect to the entire cell phone/PDA/smartphone industry segment - i.e., no phone or PDA vendor will ever be able to use the word "black" in any way in any device name whatsoever?

Your answer, please?

(By the way, there are MANY things involving the legal field and lawyers that, in my opinion, may be both ridiculous and absurd. The difference is, I've taken the high road here and refrained from the name-calling.)

I did not call you names, I called your statement/position/opinion names. There is a difference. In Court the distinction is enforced.

While physically in Court we can call one's argument /statements absurd or ridiculous, but most Judges and State Bars prohibit direct verbal attacks on opposing counsel or the Judge [albeit unprofessionally many lawyers still call each other names in their pleadings and letters].

Well, repeat: the suit most likely alleges that Samsungxxx8217;s use of the name BlackJack, amongst other acts, amounts to unfair competition and trademark dilution. Unfair competition looks at all of Samsung's acts, not just use of the term Blackjack. Trademark dilution alleges that Samsung's acts, again not just use of the word "black," lessens the value of the BlackBerry name, not just use of the word "black."

And repeat [but I have not seen the Complaint]: RIM is not suing Samsung for using the word "black" but for the unfair act of naming a product that could be confused with the BlackBerry.

The Court will not decide the case on use of the term "black" but rather the issue is whether Samsung's acts [which includes use of the name BlackJack for a smartphone] may create confusion between the two devices.

I suspect that the Complaint includes attachment Declarations that provide statements of consumers that they were confused. I suspect that even that one Website's pages advertising the Blackjack Pearl will be attached.

I do NOT think Samsung will attempt to justify its acts or defend against the lawsuit by saying "RIM is in effect attempting to trademark the word 'black.'" That argument fails even before it's printed on paper.

I understand the distinction, and referred to it prior: "calling his debating opponent (or the opponent's views) "ridiculous" and other demeaning statements..." I note that we're NOT in court, we're on an internet forum, and doing EITHER debases your argument, IMHO. As my debating professor would have put it, "by the time you're reduced to calling the opponent OR his positions "stupid", you've obviously run out of logical arguments." It would get you an "F" in debate class.

More significantly, I note that you've danced all around my question but refuse to address or answer it directly, which leads me to believe you know I'm correct and would rather not acknowledge it. So one more time, Counselor:

If RIM should win this case, will or will not the direct result be a "de-facto" trademarking of the word "black" with respect to the entire cell phone/PDA/smartphone industry segment - i.e., no phone or PDA vendor will ever be able to use the word "black" in any way in any device name whatsoever?

Your answer, please? I'm not asking you what will be in the legalese of the Complaint and Response, nor for your legal arguments about the merits and arguments on which the case will be decided in court (all of which you addressed), but rather for the plain-English, non-legalese RESULT. A simple yes or no answer is all that's required. (And if you answer in the negative, please cite examples where you believe it would be permissible for a phone/PDA vendor to use "black" without fear of further legal action on the part of RIM).

The law and lawsuits are complex. Things are far more complicated than what you are talking about.

You are getting too agitated. Far be it for me to fan your flames.

See you.

P.s. If you want to think my ignoring you from here forward constitutes an admission that you are right, whatever.

Ah, what a wonderful excuse for avoiding the question. :smile: I'm not agitated, I'm actually quite amused at your refusal to answer the direct question. Its really a rather simple question, you know. :wink:

And if my arguments and reasoning are "ridiculous" and "absurd" then I guess so was the opinion of the Judge in the Microsoft vs. Lindows case that you yourself cited earlier. Because the argument is identical - I'll refer to your earlier posting about the Judge's opinion on that one:

That's EXACTLY my argument in a nutshell, so I guess you feel the Judge in that one used "absurd" and "ridiculous" arguments and positions too. So maybe I should rephrase my opinion to say that I hope the Judge in this case is every bit as absurd and ridiculous as that Judge was, because I feel both the word "windows" and the word "black" are "too common a word" to be protectible or able to be trademarked. I certainly hope RIM has familiarized themselves with this case, as it would certainly not be in their best interests to file a case and end up paying tens of millions of dollars to the defendent, huh? :wink:

So I'm not claiming that "I'm right" or "you're wrong", but yes, I'll take your very pointed refusal to answer the simple question that I've asked multiple times as an indication that you didn't like the answer you'd have to give and would rather duck the question - so thanks. 8-) In court, we could just have the Judge direct you to answer the question, but in the forums we'll just have to draw the conclusion from the refusal to address/answer. The prosecution rests. :razz:

Personally, I'm enjoying this rather amusing legal debate within the forums. I believe that SanFran is being very professional in his arguments and his negative comments.

But, I believe that, you sir, Mr. Dallas, failed to recognize his answer. I believe that in my opinon, that SanFran has answered your question and that you can not comprehend his answer. He keeps repeating himself trying to get you to understand his point of view in understanding the case at hand.

I would continue on with my thoughts and personal views about this "legal debate" but I have an appointment that I need to get to.

My suggestion: re-read his replies. He's answered your question. :)

Well, BMW, I think he's completely avoided the question, but I'm willing to admit I'm wrong if so. :smile: Remember, what I asked was NOT the legalese arguments or pleadings, or his lawyerly thoughts on why it might be decided this way or that way, but simply if the RESULT in the real-world marketplace of a RIM win would be the "de-facto" ownership by RIM of a trademark preventing any other phone/PDA firm from using the word "black" in any way in the name of a product.

I've seen it more than once - not on TV, but in REAL courtrooms where I've been involved on the periphery of product liability suits, and a couple times where I've been a juror - where the witness is asked a question, and rather than answer the question, takes off on a long-winded tangent instead. Generally it ends up that the Judge interrupts the witness (often after the questioning lawyer asks) and directs him to simply answer the question which was asked. That's all I'm asking here.

Seems to me to be a very simple yes/no question - if RIM wins, are there ANY circumstances under which ANY phone/PDA manufacturer could EVER use the word "black" in a name, and if he answered it, I sure missed the answer. So, if you saw the answer you say I failed to recognize, by all means, please enlighten me - was it yes, or no? :smile:

Answer? No.

RIM has a trademark on BlackBerry. Capital B-l-a-c-k-Capital-B-e-r-r-y. one word. Not Black Berry, not black berry, not Motorola Q Black.

They also have a trademark on BlackBerry Pearl, but they aren't suing the makers of the black pearl phone. Because it isn't a smartphone. it isn't competing directly against their existing product.

Meanwhile, the BlackJack is also Capital-B-l-a-c-k-Capital-J-a-c-k, one word. And it does compete directly against the RIM devices, and is clearly trying to leverage RIM's existing brand identity. Considering the near infinite possible trade-mark-able brand names that Samsung could have selected, to choose one that is phonetically similar to as existing product to which they are competing, cannot be accidental.

If RIM wins (which they should), they will have defended their existing trademark, which is what their shareholders expect of them. And which means that no competitor will be able to call device a Capital-B-l-a-c-k-Capital-Something-Something, one word, as well as likely Capital-Something-Something-Capital-B-e-r-ry. Like RedBerry, for instance.

I also feel SanFrancisco answered the question. However, into the fray.

DallasFlier said, "If RIM should win this case, will or will not the direct result be a "de-facto" trademarking of the word "black" with respect to the entire cell phone/PDA/smartphone industry segment -"

One word answer: Will!! If RIM prevails, who in their right mind would name a similar looking smartphone black anything or anything berry, etc, etc. Not by order of the court or anything so dramatic, just common sense.

We're on opposite sides of the opinion table on this issue but I'd go you one step further or earlier as the case may be. I think Samsung falls into the "who in their right mind" category even before the suit was filed. When I first saw the device my first reaction was, nice device, I need to look into this puppy, then WOW, this ain't gonna fly for long. Lo, my unerring knack for prophecy came true.

DallasFlier said, "i.e., no phone or PDA vendor will ever be able to use the word "black" in any way in any device name whatsoever?"

RIM can't prevent some doughnut hole from trying to market a similar type phone and call it Dingleberry, all they can do is deal with it when it happens.

Some interesting things: I read somewhere yesterday that as part of their complaint RIM was asking that ALL Blackjack devices be delivered to RIM for destruction. Cool, what. I wonder how negotiable that point will be.

Most, if not all other forums and blogs are pretty much outraged at RIMs outrageous claim. Man, am I in the minority. What scares me is that so many people can be so totally wrong. Nyuk, nyuk.

That's a "yes" answer, according to the question I was asking.

Thanks, Fungineer and GMK, for being willing to at least answer the question that I still insist SanFran worked so hard to avoid answering with long-winded legal arguments. (y)

At least we now agree on something - that this would effectively enjoin all phone/PDA manufacturers from using the word "Black" in terms of "Black[Anything] for a phone. We may not agree on whether that's right or not, but at least we agree that would be the effective result of a RIM win here. (And I suspect SanFran agrees too, but was unwilling to simply admit that that would be the outcome.)

Let me step back even further then, and say I think RIM may have been guilty of "who in their right mind" long before that, by choosing such a combination of such VERY common words as a basic color! That, to me, is probably the original "who in their right mind" in this case. And that's the crux of the matter to me. I don't think ANY company should be allowed to get an effective trademark on exceedingly common, everyday words. If they were worried about that, then they should have been just a *bit* more creative and intelligent in their original naming of the device. Kleenex and Xerox are great examples - I can't imagine any way that any other manufacturer could imitate those names without it being instantly cut and dried what they were up to. And if some company were to try to clone similar monikers to THOSE names, I'd be TOTALLY on the other side of the argument. Shame on RIM years ago for not being more creative in their naming and coming up with something clearly and unambiguously unique like those names. As a matter of basic principle, I just don't think that its right, for instance, that a company couldn't make a smartphone with a short antenna sticking out the bottom for some good reason and decide to call it a "BlackCat."

And that, as I believe you yourself pointed out earlier, is just ONE of the risks that RIM is taking here. Whether winning at trial while at the same time losing large in the court of public opinion is a good thing or not is certainly debatable, I'd say.

And the OTHER major risk they face, as SanFran himself pointed out, is what appears to me to be a case that Samsung's attorneys should make sure to cite as potential precedent - where a Judge made it known to Microsoft that if they continued to pursue their case against "Lindows" that they would find themself with a precedent-setting opinion stating that "windows" was a word that was entirely too common and widespread to be due any protection or trademark rights. They'll sure have egg on their face (and a hole in their bank accounts) should they get a Judge who thinks similarly to the one Microsoft faced in that case.

Again - thanks to both of you for answering the simple question I had repeatedly asked and SanFran had repeatedly avoided - at least it gives ground for continued discussion.

Wait a minute. With all due respect, did I not just read your words that you were AGAINST RIM in this law suit case? Let me get your "correct wordage".

You sir, need to get your priorities straight. Now, you yourself do own a phone produced by Blackberry and should support RIM (as SanFran stated), but you stated TWICE, that you were against RIM, and that they should lose. Sounds to me like you are acting similar to our former candidate who ran for the Presidency position.

Next thing to address, the concern regarding Samsung's "hole in their bank accounts". Samsung has deep pockets. Samsung not only produces and markets phones, but tvs, home phones, printers, refridgerators, camcorders, home theatre audio, microwave, laundry products, air conditioning, etc. I think another reason RIM is suing is because Samsung can afford it. Several million dollars is nothing to Samsung.

I can't wait to hear what else other people have to contribute to the discussion. :)

Good Lord, trying to contort BBF posts as agreement with your position is pathetic. http://www.heartinsanfrancisco.com/anifingerwag.gif You really should stop talking to yourself. If it makes you feel better, I hereby appoint you BBF's judge, jury and executioner, all rolled into one.

Bonus Slap: The Windows case was not the same as the RIM vs. Samsung. If it was, don't you think the lawyers for RIM would phrase and tailor the complaint so not to end up in the same pickle? Do you even know where the Windows case was litigated and where the RIM case is pending? You might want to look into that before answering my first question [which was more rhetorical than a question to you].

RIM's lawyers are not mental slobs.....

http://www.heartinsanfrancisco.com/r...-19_002515.jpg

Uh... isn't the issue and topic of this thread "legal." So "legal arguments" are proper.

Maybe you should read this to understand one aspect of the RIM case.

http://www.heartinsanfrancisco.com/t...rkdilution.pdf

Read and weap. This is what it is all about.

From the Columbia Law Review of Trademark infringement.

Source: http://web.lexis-nexis.com.proxy.wic...cb07e6e0640ca6

Ok, one more about trademarks, then I'm done, and it's late and too much to read.

Have fun reading all about trademarks. :)
Source: http://web.lexis-nexis.com.proxy.wic...5deb6ffb1901ca

Regarding the term frivolous. Maybe one of our attorney members' can spend a few minutes and briefly outline a little of Rule 11 (SanFrancisco did make mention of it) in IP cases. I think it may go a long way toward putting the "frivolity" aspect in focus. If I recall correctly, both the plaintiff AND the signatory attorney are subject to some pretty stiff penalties if the defendant can substantiate, or even if the court decides, going in, that the suit is without proper foundation or, in fact, is frivolous. I believe the attorney is personally liable for damages if he signs on to a specious claim. This rule in the code , once again I believe, gives a potential plaintiff pause before entering lightly into an action.

I think this would be constructive. And, if I'm misinformed about this I will be corrected. Also a positive

DallasFlier, RIM has has used the name BlackBerry for many years and has built a reputation on it. When they chose the name BlackBerry they also didn't do it in a vacuum and at the time there wasn't an entity in the market that they were even close to infringing on. A fairly unique product, unique name. Sounds like clear sailing to me. They certainly didn't do anything wrong and in my opinion the name BlackBerry is distinctive from all other phones, PDA's, etc.

And now comes Samsung. Clearly, a complete opposite of the above.

I try to pay attention to what I read and if I am guilty of misinterpreting the context, shame on me but I read that your major problem with all this is that if RIM prevails they will lock up the trademark rights (in a smartphone marketplace) to the use of the name "Black" anything. As I stated prior, that is certainly a potential fallout of all this. As I also put it, I believe this was also the situation before the fan got covered with you know what.

In a similar vein, Motorola likely took "Q" out of the marketplace (and that's in the alphabet), and we probably won't see the XYZ corp. razor anytime soon. What's the diff?

Wow, you guys stay up all night doing this! Sorry, I was busy sleeping! :smile:

Lets see - where to begin... OK, have to start here:

Again - wow... Gee, maybe that's really the way you choose to take your positions - "I bought something from this company a while back so now I must be for everything they ever do from here on out." I'm afraid I put a little more intellectual and independent thought into the positions I take and hold - and I certainly wouldn't ever for a moment think that just because I bought a RIM product a year ago that its now incumbent on me to blindly support everything they ever do. Heck, I'm typing this on a computer I own that's running WindowsXP and I don't agree with everything Microsoft does either - so sue me! WAIT - maybe I shouldn't say that, SanFran might think I'm being serious. :razz:

Hmm... Better go back and read my post again - a little more carefully this time. I was talking about the potential hole in RIM's bank account, not Samsungs - should RIM as the plaintiff lose this big time in a similar way to the way Microsoft lost that case big time.

OK - next. Hmm, SanFran has been reduced to posting lists of attorney's names, firm names, addresses and phone numbers in the middle of the night - which I won't clutter up the thread by quoting here. Heck, I can even now email Delilah directly! Not sure what that was supposed to accomplish - maybe I was supposed to be impressed somehow? Well, OK, I admit going to court with a trio named Parker, Sabina and Delilah *does* sound a little unique at least - although, they're not real A-list - heck, none of them are even "named" partners in the firm. :razz: Oh, and he continues his pattern of juvenile name-calling, this time calling me "pathetic" and giving me "cyber slaps" - all this after claiming earlier that *I* was the one who was getting too agitated. Thanks for the morning chuckle. :wink:

I think I understand the legal term "frivolous", at least from a layman's perspective. If you go back through the thread, the only ones who have introduced the term "frivolous" into the thread were our attorney buddies SanFran and mendelec. I've very carefully avoided the term, and certainly will concede that RIM is not being "frivolous" in the legal sense.

Yes, you read my major issue with this just fine. "What's the diff" to me and apparently LOTS of other people is - "black" is a basic descriptive term that in its long-term, common English-language usage can be applied to a large percentage of product *in this market* and a large percentage of product *in this market* even BEFORE RIM decided to call theirs the "BlackBerry" and certainly before they decided to work hard to enjoin anyone else from using Black______ at all. Neither Q nor razor could have been applied descriptively to products in the marketplace - so the first and only assocation of them with phones is with those respective products. And - based on that Microsoft case, by the way, I'd say without a test case its not a given that "razor" has been totally removed from the marketplace, since it appears that Microsoft got a very expensive hand-slap when trying to remove "windows" in a similar way.

Giving RIM such a broad protection against the use of "black" by anyone else is just something I'm philosophically opposed to. But just to reiterate and make it perfectly clear, I *understand* that given our current legal system, there's at least a reasonable possibility that they may be able to accomplish that - so no more long-winded legal arguments, please? The witness is willing to stipulate as to the legal non-frivolity of the suit at hand, OK? :wink:

iPhone - from Linksys?!?!
 

Very interesting development on a related front:

The iPhone Launches...From Linksys

FWIW, here's what at least one industry analyst has to say (article HERE):

So, what says the BBF trademark & IP defense team on this one? Apple has never before been a participant in the phone biz and as noted above, they haven't yet made any official announcements announcing or naming a product - do they have inherent ownership on the lower case letter "i" with regards to any electronic device of any kind?

It may be. Much of thse trademark suits hinge on phonetic similarity (razr=razor), or confusion in the marketplace. iWhatever is assumed to be an Apple device. In the Linksys case, I have to say that even I upon hearing that there was such an animal as an iPhone, would immediately assume that it was an Apple device.

In the RIM vs Samsung case, id Samsung (or any other manufacturer) came out with a non-amsrtphone device (regulat cell or non-connected PDA) and called it BlackThing, RIM could not defend it. That case will hinge on whether Black??? as a smart phone as an association with RIM in the public's mind. And the physical and functional similarity of the devices are likely enough to meet that standard.

Very interesting, indeed. Linksys (Cisco), per this article : IPhone unveiled, but not by Apple: Financial News - Yahoo! Finance has had the mark since 2000!

In this article AppleInsider | Exclusive: Apple seeks rights to iPhone trademark Apple is reported to be trying to secure off-shore trademark rights.

I too would have to agree if someone asked me who made the iPhone, without a bat of a lash, I would say Apple.

This is really a good one.

BTW, has anyone seen an Apple phone? I have probably seen a dozen pics of it but they're all different. Is there an official leaked shot?

In major litigation there are typically three to four lawyers on the caption and in the case. There is typically one partner and three associates. That's how it works in major litigation.

My point in listing the firm snapshot was to show, with evidence instead of "I heard," that the RIM lawyers are from an established firm. And the Partner who is in charge of the case is a specialist in these types of cases. Besides, I was in on the Court's website trying to get the Compaint, but it is not being posted. So while I was there, I screen captured the lawyer's page.

While you may not see the significance of this, I assure you that federal judges take note of who is who because that give the Judge a "preview" of whether a case has merit or not.

Bonus Tip: You were sleeping? I'd be worried about what goes on while people like me are lurking about. Better sleep with one eye open.:razz: :smile:

Seriously though, I only need about three hours sleep a night, so that gives me lots of extra time to cause trouble aka work on cases.(y)

Wow, I hadn't read that Linksys has had it registered as a trademark since 2000! The plot definitely thickens! Could be in for a real epic battle here - certainly as a division of Cisco Linksys has plenty deep enough pockets to aggressively defend the trademark if they've owned it for 6 years already.

I tend to agree, I'd think at this point that "iPhone" definitely means Apple. Only question in my mind is - I think one of the main reasons I'd think so, is due to the widespread speculation in the press the last few months. As far as I know, Apple hasn't said a single word about it, nor have they shown any pictures - which is why there are SO many faked, mocked-up pics out there - they're all "what if" speculative pictures. So, on its own with absolutely no announcement or words from Apple, is widespread speculation by the press - which has contributed heavily to putting the "iPhone = Apple" into your head and mine - enough to invalidate a 6 year old registered trademark of another company?

Will be VERY interesting to watch. The fact that Apple is attempting a flank attack by attempting a registration in the far east first, tends to indicate to me that they WILL fight.

Every case turns on the facts, so not sure on this.

Seems to me I heard that when Apple was in the news talking about the phone, someone on the news mentioned "iPhone" but I'm not sure if that was just the news guy commenting on what he thought it might be called.

There's about an extensive legal and factual checklist one has to complete before determining if there's a basis to sue for unfair competition and IP violations. Even then, one may be left in the gray area where only a Court can resolve the dispute.

Just shooting from the hip with a blindfold on, Apple does not own the letter "i" and cannot go after anyone who puts an "i" as the first letter in a product name.

I recall when Microsoft tried to trademark the little hand and index finger that pops up on your screen when you hover over a link. They failed, the Court saying that it was too generic and MS did not own it, nor could they "buy it."

But if one makes an MP3 device that looks like an iPod and calls it the "iPodder" or a seventies sounding "iMod" then Apple has a valid complaint.

I would also question if Apple has any complaints since they were not in the phone business before others came out with the iPhone. Someone else beat them to it.

I would also want to know if Apple had made attempts to, or in fact did, trademark the name "iPhone."

That's just some initial thoughts I have.

Well on that news, I think Apple will lose any claim. Courts give great weight to registered trademarks because there is a significant process one has to go through to get a trademark.

Also, not sure on this, but has the iPod been around for six years? If not, seems an "i" something or other was not even an issue at the time.

I think Apple is not going to be able to name their phone the "iphone." Besides, I think calling it what it is and where it comes from is better: "Apple Phone" says it all.

There's too much info on it to post in here. Generally though:

1. Such motions are a waste of time. Fed courts rarely grant them. The motion is hard to win because in the legal world and for Rule 11 "frivolous" is difficult to prove. Generally the word is defined as having ZERO basis in law or fact. Reality is that one can always find some shred of fact and law to support a case or court filing.

2. If you have seen the movie Civil Action, there are a few scenes that deal with a Rule 11 motion. Pretty accurate.

3. Rule 11 motions are a waste because the purpose of the motion is to deter future conduct, not punish a lawyer for past conduct. Moreover, the sanctions [fine] goes to the Court and the fines are typically small.

4. Although a Court could dismiss a case as part of a Rule 11 sanction, they rarely will because that is more a punishment for past conduct than a deterrence sanction. Moreover, a dismissal ends up sanctioning the party/client for the lawyer's bad acts. While it is in the Court's power, Rule 11 is not supposed to be applied against parties, it deals with the lawyers' conduct.

5. If one wants to get a case dismissed, most Courts require that a party file a motion to dismiss rather than to seek dismissal through Rule 11.

6. Generally, as depicted in the movie Civil Action, only malicious, incompetent, or inexperienced lawyers file Rule 11 motions. Most of the time the motion is filed to harass, intimidate or distract the lawyer against whom the motion is filed. Sometimes the motion is filed to motivate a party to settle a case.

7. Hazard: If the Court finds that the Rule 11 motion was filed for ulterior/improper motive, the Court will most likely sanction the lawyer who filed the motion in the first place.

Well, the iPod isn't that old, but the iMac probably is.

Per the link GMK posted, sounds like they intend to *try* to call it the iPhone though. They're making an end run and filing a trademark application somewhere in the "far east" rather than addressing the Linksys situation in the U.S., sounds like. Should be interesting.

EDIT: From that article GMK posted:

At first glance, all looks pretty sneaky and underhanded to me - sure makes me think they already knew about the existing Linksys trademark in the U.S.

A U.S. trademark will trump later filed foreign trademarks, at least for use in the U.S.

For the U. S. market, Apple's foreign registrations are a non-event.

Apple obviously checked and found out "iPhone" was taken, so maybe they have some tricks up their sleeves that I am unaware of. Can't think of what they are.

Sure they did. It took me 20 seconds on the USPTO site to come up with:

Published for Opposition December 29, 1998
Registration Number 2293011
Registration Date November 16, 1999
Owner (REGISTRANT) INFOGEAR TECHNOLOGY CORPORATION CORPORATION CALIFORNIA 1775 WOODSIDE ROAD REDWOOD CITY CALIFORNIA 94061

(LAST LISTED OWNER) CISCO TECNOLOGY, INC. CORPORATION CALIFORNIA 170 WEST TASMAN SAN JOSE CALIFORNIA 95134

I can't post the search result link but you can start here: United States Patent and Trademark Office Home Page then go to trademark then search.

There's a lot more but this is the grist. There are 9 listings for IPHONE but only one registered.

Well I guess we wait and see. If industry rumors are correct I believe 1st Qtr '07 and some say as early as January for the Apple iPhone?

For all the lively discussion regarding the BlackJack. We didn't spend much time on the Black Pearl by Haier.

Haier's tiny "Black Pearl" - Engadget Mobile

So its actually been a registered trademark of Cisco or companies that Cisco has subsequently become owner of, since November 16, 1999 - over 7 years now.

So, I have two questions:

1) Who's going to file suit first - Cisco/Linksys or Apple?

2) What's Apple going to end up calling their phone instead? :smile: Lets see, "Pod" has nothing inherently to do with music, so why does this need to have anything to do with phones? Hmm, how about... the iBerry! :razz:

I would assume that if RIM wins against Samsung, all it will take is a strongly worded letter to Haier from their legal team. If, on the other hand, RIM loses against Samsung, then they'll simply pretend that they've never heard of Haier. :smile:

I remembered from my IP class way back in my university days that if you don't start using your trademark in your product in a year or so, you lose it. No?

They just can't register millions of marks without having a product for 7 years and all of a sudden start using it to take advantage of the iPxxx name from Apple. So Apple might be able to win in court..

It's actually pretty complicated as to what constitutes "use" and "abandonment." But what you say has some accuracy.

If you can't sleep at night, here is some reading to help you catch some zzzzzzzzz.

Trademark Electronic Application System (TEAS) Home Page

Trademark Electronic Application System (TEAS) Home Page

Thanks for thinking of me. :wink:

I was up till 3-4am here last night reading and contemplating when I was going to fall asleep. After reading those Lexis LONG law reviews of trademark terminology, I was feeling the zzzzz's coming. :)

In an article I read it said the the original holder (info something) had tried a product named iphone and it failed in market, circa 1998. The name, as IP transfered to the successors in business, eventually Cisco's sub Linksys. So there was some use of the mark. Dunno if this is sufficent to your point but there was some use.

How about Apple resurrecting the Newton name. Catchy, what?

I couldn't resist this

News FLASH: Chinese Electronics Factory Imports 12 Million Sugar Cubes

A more in depth article on the Apple-Cisco-Comwave thing here: » Over xxx8220;iPhone,xxx8221; will Apple enter into international trademark war with Cisco? | Berlindxxx8217;s Testbed | ZDNet.com

It mentions amongst other things an abandonment of the mark by Cisco in Canada and that Comwave has been using the iphone name in Canada and the US for a couple of years. I couldn't find any reference to an iphone on the comwave site but they do have an ephone listed. Due to the nature of their business this may present as more of a problem to Cisco, or vice versa than to Apple.

Edit: I found the iPhone here @ comwave: comwave | iPhone

This is a VOIP phone. It sure seems to be more Linksys than Apple oriented.

Interesting read. Follow the links in the article

Rim is always getting sued. Why not turn the tables when an issue does arise?

Seems every business in the tech industry is always getting sued.

In fact, when I had a suit against a big tech company it came out that their in-house counsel department contained 300 lawyers. That's a lot of lawyers to have on one's payroll.

Heck, I think Microsoft gets served a new lawsuit every ten minutes. And they are suing someone every ten minutes.

When I was looking for the RIM vs. Samsung complaint, in the one federal court, Samsung had pages of lawsuits.:-o

But the Haier phone isn't a Smartphone and isn't competing against RIM. Nor does it look anything like any (current) BB device. I assume they'll get a pass.

No they won't fist what kind os would they run wnmo don't thinksos. And winmo is what keeps the treo crowd happy


As for Rim they could prbabbly use tha sales reps testomny against samsung after all the. Sales rep confused as samsung model witha a rim model it has thword black in it uses a qwerty keyboard simaler to the perla has a trackweels simaler to the perl thaers legal ammo right ther for cross examination.

One of the issues here is whether a cellphone is a cellphone or smartphone or PDA etc., but I'm not really sure how clear that line really is, especially in the cellphone buying public at large. We, by our membership in this forum alone, can be deemed to be more sophisticated than the general public regarding smartphones and we likely have a clearer view of what competes, feature by feature.

I know when I see a new model of a "smart" cellphone I ask the holder if I can take a look at their "cellphone" not at their "smartphone," mainly because I don't know until later in the conversation if they even know what a smartphone is. I would guess that smartphone vs cellphone could certainly be arguable but does that carry more weight than the name when applied to cellphones in general? Could a company call an automobile an Explorer? Ford uses it for their SUV. But is an SUV exclusively an SUV, or a truck or is it a motor vehicle that includes them all?

Even though the Black Pearl is probably small potatoes in the scheme of things I wouldn't think that RIM could overlook it, unless of course it really must be a smartphone.

But the general public can see a difference between a smartphone with a 12 key keypad and a device with a qwerty keyboard.

It seems that some of the trademark litigation hinges on confusion.

If Joe public sees an add for the BB Pearl, then walks in a store and tells the clerk: "I saw this phone that could also do email and stuff, it's called Black-something", if the clerk pulls out a BB Pearl, a Blackjack and a Black Pearl, I'm sure Joe Public would immediately look at the BP and reject it. There could be confusion with the other 2.

Case in point, just out today, Jan 3, 2007. Samsung is always up to something.:razz:

WRF intellectual-property management group has sued mobile phone makers Nokia, Samsung Electronics and Matsushita-owned Panasonic for infringing on a patent for wireless Bluetooth technology.
"Defendants have manufactured, used, imported into the United States, sold and offered for sale devices which, or the use of which, infringes at least the '963' patent," Washington Research Foundation said in a complaint filed at the U.S. Western District Court of Washington at Seattle. WRF helps manage investment in and licensing of technology developed by researchers in the state of Washington.

The WRF complaint targeted products containing Bluetooth chips from British chipmaker CSR, which is the world market leader for chips that wirelessly connect electronic gadgets such as cell phones, headsets and laptops.

CSR, which was not immediately available to comment, was not sued by the research group. And CSR rival Broadcom, based in the U.S., has acquired a license to use the radio frequency receiver technology, which was patented in 1999, WRF said.

RIM thinks the Pearl is a smartphone, the below ad appears all over the Net.


http://www.heartinsanfrancisco.com/bbrimpearlad.jpg

Today in San Francisco Steve Jobs will be announcing Apple's new products. Speculation on the news is that it will be a cell phone. No one is calling it the "iPhone."

If he announces a phone, guess we shall see what they named it.

Well, it's going to called the iPhone, even those the local news reported that "Cisco has had the iPhone trademark for the past 6 years."

http://www.heartinsanfrancisco.com/iphone.jpg