RIM's BBM service targeted for name infringement

Research In Motion could once again face a legal fracas over the name of one of its software products.

Broadcast measurement firm BBM Canada has taken offense with RIM's use of the "BBM" shorthand moniker for its BlackBerry Messenger service, Reuters reports. That's RIM's software that lets BlackBerry users communicate with one another, and comes pre-installed on many of the company's devices.

BBM Canada, which formerly went by the Bureau of Broadcast Measurement until a name shortening in the 1960s, sent a cease and desist letter to RIM for using the BBM naming on the software last year. In an interview with Reuters, BBM Canada's chief executive, Jim MacLeod, told the outlet that RIM's ignored that letter, as well as requests to meet with RIM co-CEO Jim Balsillie to discuss the matter.

MacLeod also said that the company would be willing to sell its rights to the name versus taking the matter to court.

In a statement provided to CNET, RIM said that the two services may share the name, but are totally different, and thus "eligible to co-exist under Canadian trademark law," and that the company is seeking to dismiss BBM Canada's legal complaint. That full statement is below:

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.

This is the latest in legal battles for RIM, which just dealt with a name change for its BBX mobile software. Earlier this month, RIM announced it would be changing the name of that software to "BlackBerry 10." That decision came following a legal spat with a New Mexico software provider Basis International, which won a temporary restraining order against RIM that left it unable to use the BBX mark at the DevCon conference in Singapore.

RIM introduced its Messenger service for BlackBerry devices in 2005, later launching the feature worldwide in 2008. Over the years the software has been expanded to work from inside applications, and integrate with phone features such as playing music. It's also been an occasional target of controversy, including being responsible for BlackBerry network downtime. A report earlier this week, which RIM has vehemently denied, also claimed that the software was partially the source of delays in rolling out BlackBerry 10.

Updated at 11:57 a.m. PT with comment from RIM