Example of why RIM is Suing Samsung over the name BlackJack

Anthony
#1. December 11th, 2006, at 5:03 PM.

suit not SUITE
sells not SALES

terrible

Jay
#3. December 11th, 2006, at 5:26 PM.

Robb,

Respectfully, that is the fault of American Cell not being able to tell the difference, not Samsung.
One phone is called the RIM Blackberry Pearl and the other is called the Samsung BlackJack. Whoever put together the ad for American Cell should have put down the bong when doing the cut and paste, because clearly they are different.
They are describing a phone with 1) a trackball, 2) dedicated email server, 3) QWERTY SureType, 4) Different manufacturer; yet they clearly are showing a phone called the Samsung Blackjack.

Easy to say that this lends credence to arguably a petty lawsuit. It would be different if they used BB Connect and falsely advertised it as a BB device, not the case…

BTW: Like your site

Thought
#4. December 11th, 2006, at 7:27 PM.

The basic thesis that many consumers will confuse the names BlackJack and BlackBerry holds true. I’ve already encountered at least one person who made this error, and no doubt there are many stories out there of similar confusion.

Let’s face it…the average consumer is not like most of us who read these type of blogs, who know every detail and nuance regarding various models of various gadgets. The avg consumer hears a name beginning with “black” and makes an assumption…

I would also conjecture that one reason why Samsung named this phone was to take advantage of the confusion of names.

However, I don’t see how RIM can win this one. To do so they basically have to gain the right to every word beginning with “black”…and I just don’t see that happening.

Thought
#6. December 11th, 2006, at 9:58 PM.

Jay: I love your imagery of the American Cell worker with the bong doing the cut and paste…what a hoot!

steve
#7. December 11th, 2006, at 10:13 PM.

Re: Thought (#4) and Jay (#3):

Thought: Good comments up until the last paragraph. *Actual* confusion, such as that displayed above, is a strong argument for trademark infringement. It’s not a question of claiming rights to every name beginning with “Black-” but to similar products and services beginning with it.

Jay: It doesn’t matter that the mistake here is not Samsung’s “fault.” There is actual confusion by a distributor. A court’s opinion could likely follow that presented in the last paragraph of the above article. And Samsung can be “at fault” because it gave a fairly similar name to a very similar product. The lawsuit isn’t “petty” if the similar names can cause confusion among typical consumers. ANd the upcoming 8800 models will, if anything, beeven more similar to the Blackjack.

(I bet you can guess what I do by day….)

Thought
#8. December 12th, 2006, at 12:08 AM.

Steve: from your comments it seems that you are a lawyer. If so could you please elaborate a little more on what the law actually says on this issue?

You are correct…I am no lawyer and so I am simply commenting on what seems to make sense…as most of us are on these blogs…which is why a true legal opinion would help us better understand.

Jay
#9. December 12th, 2006, at 10:24 AM.

Steve,

I worked for a consumer products company in both finance and brand marketing.
If a 3rd party (advertiser) takes the image of one products and overlays it against the verbage of a different product, then who is at fault.
Example; Walmart puts up a display of Coke and use the image of Pepsi in the ad, while talking about how refreshing Coke is.
Is Pepsi responsible for WalMart not doing due diligence and making sure that the images and verbage used in their instore displays don’t match? No.
Same situation with American Cell. Samsung is not responsible for the mistake.
If a customer walks into your store and starts talking about a smartphone that runs windows 5.0 and you show them a Treo 680 or Nokia E62, and they buy a BB 8700c, who’s fault is it that the customer and sales rep didn’t know the product?
The lawsuit is frivilous.

I saw a lawsuit filed against the makers of Vaseline Petroleum Jelly because even though the product is not sold in the aisle with Peanut Butter and Jelly/Jam and is not marked as a food product…some guy bought the medicated Vaseline, spread it on his toast and ate it.
He got sick and sued for false advertising and his medical cost.
Now you tell me whose fault is that?

steve
#10. December 12th, 2006, at 11:49 AM.

It’s not a question of it being American Cell’s “fault.” The important piece is that there is not only a likelihood of confusion, but *actual* confusion, which is strong evidence in a trademark case. In fact, on a linked page there is a comment that someone who wanted a Pearl for Xmas was given a Blackjack by his mother, *another* example of actual confusion.

I agree that Blackberry shouldn’t have rights to any name beginning with “Black-” but in a very specific product class (cell phones/smartphones) the similarity can be confusingly similar (and apparently is to some people).

I’ve dealt with several trademark litigations and have in addition read tons of case law and analysis on the subject. I respectfully disagree, and believe that the suit is *not* frivolous. This is a question of IP/trademark rights and infringement, not consumer liability.

Steve (blackberrycool)
#11. December 12th, 2006, at 3:33 PM.

I’ll agree with the majority - this is a dumb lawsuit, but I think given the fact that the majority of less-educated consumers are bound to get these mixed up, it’s a necessity.

steve
#12. December 12th, 2006, at 4:25 PM.

That sums it up well IMO. But in any case, it is not frivolous.

jibi@bbf
#13. December 12th, 2006, at 6:24 PM.

Did anyone say anything when China Unicom (the state-run mobile carrier in China) debuted their RedBerry service, modeled after the BlackBerry? I’m sure if RIM were able to actually raise a suit in that country for copyright violation, most people would have never mentioned such a case being frivolous.

steve
#15. December 14th, 2006, at 10:35 AM.

There’s also a discussion of this at the bberry forums (on the page link above), including some comments from another IP attorney. (And from some critical posters as well!)