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RIM faces another trademark lawsuit, this time for 'BBM'

RIM faces another trademark lawsuit, this time for 'BBM'


RIM is in the midst of another trademark lawsuit, this time over its BBM name for BlackBerry Messenger.

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If RIM's sudden change from BBX to BlackBerry 10 in the wake of a trademark lawsuit left your head spinning, it's time to set it right again to properly take in yet another trademark lawsuit. BBM Canada, a group that provides consumer analytics and intelligence to broadcasters and has been using the "BBM" name since 1944, is in the midst of an ongoing lawsuit with RIM over the name that began way back in August, 2010. BBM Canada's CEO Jim McLeod told The Globe and Mail that his group attempted to negotiate with RIM — going so far as to offer to rebrand itself at RIM's expense — but was rebuffed. McLeod's next move was apparently to go public with the case in the run up to the next hearing, telling The Globe and Mail "We want our name back." Now, instead of offering to rename BBM Canada, the group is seeking damages and asking the court to place on injunction on RIM to prevent it from continuing to use the name.

For its part, RIM attempted to gain a trademark on "BBM" in Canada in February 2010, but at best the application is pending. RIM's response to the recent attention brought to the case, in a statement to All Things D, is strongly worded:

Since its launch in July 2005, BlackBerry Messenger has become a tremendously popular social networking service. In 2010, RIM started to formally adopt the BBM acronym, which had, at that point, already been organically coined and widely used by BlackBerry Messenger customers as a natural abbreviation of the BlackBerry Messenger name. The services associated with RIM’s BBM offering clearly do not overlap with BBM Canada’s services and the two marks are therefore eligible to co-exist under Canadian trademark law. The two companies are in different industries and have never been competitors in any area. We believe that BBM Canada is attempting to obtain trademark protection for the BBM acronym that is well beyond the narrow range of the services it provides and well beyond the scope of rights afforded by Canadian trademark law. RIM has therefore asked the Court to dismiss the application and award costs to RIM. Further, for clarity, RIM’s application to register BBM as a trademark with the Canadian Intellectual Property Office (CIPO) is pending and we are confident that a registration will eventually issue. The inference by BBM Canada that CIPO has refused RIM’s BBM trademark application is quite frankly very misleadingBBM is an important brand for RIM, in fact it's one of the best assets the company has goig for it right now. It's important enough that in recent months (and like in future until BlackBerry 10 comes out), RIM's biggest smartphone software pushes have revolved around the BlackBerry Messenger. In other words, we expect RIM to put up a bit more of a fight this time around than it did against Basis with the BBX mark. The next hearing is on January 11th.