With about 8.5 percent of the market, Mac OS is the second most popular general purpose computer operating system behind the Microsoft Windows operating system. Originally launched in 1984, Mac OS has been continuously updated since that time and, as is now customary in the software industry, each major new iteration has been identified with a numerical version number such as, for example, Mac OS 7 (released in May, 1991), Mac OS 8 (July 1997) and Mac OS 9 (October 1999). As it turned out, Mac OS 9 was the final release of what is now referred to as the classic Mac OS. In 2001, Apple replaced Mac OS 9 with an all new, Unix-based operating system built on technology developed at Steve Jobs’ other computer company, NeXT, which Mr. Jobs started after he was fired from Apple in 1985 and which Apple acquired in 1997. As a nod to the fact that this was an all new system, Apple dispensed with the Arabic version numbers and instead identified its new operating system with the Roman numeral X. The tenth iteration of the Mac OS, Mac OS X (pronounced “eks”) has been a success and helped spark the renaissance that Apple parlayed with the iPod, iPhone and now the iPad.
RIM’s fortunes of late have been less bright, thanks in large part to the success of the iPhone and others like it that have eroded the market for RIM’s once-dominant BlackBerry handheld device. Perhaps trying to capture a little Apple’s mojo, RIM announced in October, 2011 that it was replacing its current operating system, BlackBerry 7, with a new operating system: BBX. However, BlackBerry apparently hadn’t done its homework as it was immediately hit with a lawsuit by BASIS International Ltd. alleging trademark infringement and unfair competition and seeking both temporary and permanent injunctions barring RIM’s use of the name. BASIS is an Albuquerque based software company that has, since 1985, provided development tools for business software development on multiple computing platforms. BASIS’ software is based on and extends the Business BASIC programming language and is thus aptly named BBx®. Yes, that little ® means that BASIS has registered its trademark in the BBX name for computer programming and software development tools. “Even the more cursory search for the BBX trademark would have shown that we hold it,” BASIS’ chief executive Nico Spence observed. Mr. Spence’s observation is correct and a New Mexico federal court apparently agreed, granting BASIS’s motion for an injunction barring RIM’s use of the BBX name at its developer’s conference. Without acknowledging the court’s ruling, RIM promptly changed the name of its upcoming operating system, stating, “The BlackBerry 10 name reflects the significance of the new platform….”
There are two relatively obvious lessons to be learned from this case. First, register your trademarks. The fact that BASIS had registered its trademark rights in the BBX name made its case stronger and made it significantly easier for it to obtain a restraining order against RIM. Without the registration, BASIS would still have had a right in the BBX mark by virtue of its longstanding use but it would have had more and higher hurdles to clear to protect that right. With its registration, BASIS obtained not only the right to bring suit in federal court, but the benefit of the legal presumption of ownership and the exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration. Registration also has the benefit of having the mark listed in the United States Patent and Trademark Office’s online database presumably making it easy to find and putting others on notice of its use. This brings me to the second seemingly obvious lesson; conduct a trademark search before committing to a mark. A simple search of the USPTO database is a good start and would have avoided RIM’s situation in this instance, but a search of the online database is not enough. Trademarks are source identifiers and trademark rights are developed through use of a mark. Registration only records and enhances those rights. Many small, medium and even large businesses are (purposefully or not) using and thus have rights in unregistered trademarks. Consequently, it is highly desirable if not absolutely necessary to do a thorough search for both registered and common law uses of a potential mark before committing significant resources to deploying and developing that mark on your brand. Anything less is simply hoping for the best.
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