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.
Last edited by SanFrancisco : 12-12-2006 at 01:43 PM.