It looks like RIM’s response to BBM Canada’s trademark complaint is exactly what I thought it would be. To sum it up RIM is saying that there is no overlap between BBM Canada’s broadcast statistics service and a RIM’s instant messaging platform. Just to give you an idea “Material Innovations, Inc.” owns the trademark for BBM for “Agricultural machines, namely, big bale mulchers” in the United States .RIM also has a trademark for BBM but it is from 2010.
Here is RIM’s exact statement:
RIM Media Statement – BBM Trademark Litigation: December 23, 2011
“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 misleading."
As it turns out there are actually 22 trademarks with BBM in their name though it looks like BBM Canada has the oldest “live” trademark in the US. According to the Trademark I saw the BBM Canada “BBM” trademark covers “ADVERTISING CONSULTATION, NAMELY, PROVIDING ANALYSIS IN THE FORM OF AN IMPARTIAL MEASUREMENT OF THE CIRCULATION, COVERAGE AND AUDIENCE OF ALL TYPES OF ADVERTISING MEDIA.” which is obviously something you would confuse with BBM.