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Ringy Dingy: A Handy PR Tool for Trademark Lawyers

Posted in Mixed Bag of Nuts

Years ago I recall hearing a veteran trademark lawyer warn intellectual property continuing legal education attendees, "When your toolbox only has a hammer in it, everything in your world starts to look like a nail."

Fair enough. It’s time for all of us to revisit the contents of our professional toolbox.

Last week, following the firestorm of criticism surrounding Best Buy’s cease and desist letter to a Catholic priest in Wisconsin, Dan provided some balanced and helpful Thoughts on the God Squad Matter, ending his post by indicating an interest in "hearing the thoughts of others on the question of how best to approach a potentially sensitive enforcement situation like this."

In further support of my admittedly Monday morning quarterback efforts and Dan’s suggestion that Best Buy probably was better off picking up the phone on this one, I offer legal and PR types one of Matthew Broderick’s most memorable and applicable lines from Ferris Bueller’s Day Off: "Ringy dingy":

Yes, the telephone (not the shower-head) definitely needs to be one of the tools in any trademark lawyer’s toolbox, especially when it comes to delicate enforcement efforts like the one Best Buy faced with Father Luke Strand’s use of a God Squad logo that appeared to be inspired by Best Buy’s Geek Squad logo.

It is always important to keep in mind the ultimate goal of the particular enforcement effort, and, in many cases, a successful enforcement effort is when the trademark owner convinces another to stop doing what the brand owner finds to be objectionable, with as little effort, hassle, and expense as possible. If this can be accomplished without sending a formal cease and desist letter, all the better.

Taking it a step further, after a phone call, why not consider a face-to-face meeting for the delicate kinds of enforcement efforts that have the legal department consulting with the PR folks before sending any cease and desist letters in the first place? For example, how might this have played out differently for Best Buy if someone from the PR or marketing department had reached out to and even met with Father Luke Strand to offer the placement of a couple of year’s worth of Geek Squad ads in the weekly bulletin of the Holy Family Parish in Fon du Lac, Wisconsin, and in return, obtain a modification of the appearance of the God Squad logo on Father Strand’s one vehicle?

In the end, Best Buy’s explanation that sending the cease and desist letter "was a really difficult thing for us to do," implies that the PR and legal teams discussed the pros and cons before sending the demand letter, but it also begs the question of why a more creative and less routine approach to their trademark concern wasn’t pursued, especially since Best Buy also has expressed that "we appreciate what Fr. Strand is trying to accomplish with his mission."