by Anne-Marie Dinius, Intellectual Property Manager for Northeastern's Center for Research Innovation
Two recent legal decisions highlight the importance of exercising caution in the selection of logos, insignia, domain names and other University advertising and marketing materials. The first of these cases involves a trademark application for the term “CRACKBERRY” that was opposed by the company Research in Motion, which owns the “BLACKBERRY™” trademark.
Research in Motion opposed allowing the mark CRACKBERRY to be trademarked for two main reasons. First, consumers faced with purchasing devices with either the BLACKBERRY or CRACKBERRY designations would likely be confused about the devices in question. Second, allowing the CRACKBERRY mark to issue would dilute the value and fame of the BLACKBERRY mark. In defense, CRACKBERRY argued that the trademark should issue because it is a parody of the term BLACKBERRY. The Trademark Board disagreed because CRACKBERRY was seeking to use the mark to sell merchandise instead of simply as a parody, and use of a CRACKBERRY trademark would confuse consumers and harm BLACKBERRY.
The second decision involves a company which operated a website called faceporn.com. Facebook™ went to court seeking to shut down the faceporn.com website. Facebook lost the case on jurisdictional grounds, but if those jurisdictional issues were not present, the legal dispute would have been protracted and expensive.
These cases reinforce the need to work closely with appropriate University resources as soon as practicably possible to carefully create a proposed trademark or logo before launching a University project. You should choose proposed trademarks, logos, and domain names cautiously and with an eye toward steering clear of established companies. Once you have developed a proposed plan, contact Vanessa Salas in the University’s Department of Marketing and Communications at x5453. That Department must approve any proposed trademark or logo related to the University, including its departments, programs, and centers.
In addition, these cases demonstrate that in order to protect its reputation, the University must remain vigilant of potential unauthorized uses of its name, logo, images and other intellectual property. If you come across any use of the University’s intellectual property that you believe may be unauthorized, please contact Marketing and Communications. Examples of such unauthorized uses may include:
- a vendor listing the University as its preferred customer;
- a company incorporating the University’s images into its website or marketing materials;
- a photographer offering for re-sale photographs it took for the University, or
- a company incorporating into its own name the University’s name or a variation thereof (NU, NEU, etc) in an attempt to appeal to the University’s community.