Duets Blog : Creativity and the Law: DuetsBlog

This past June, Pizza Hut sliced "Pizza" from its boxes and select stores, creating "The Hut". Perhaps this was to reflect the expanded menu, which includes pasta and other non-pizza items, or to be more in sync with the "text message generation" as stated by the Pizza hut Chief Marketing Officer Brian Niccol. But "The Hut" lacks uniqueness, and the food half of their name, which defines them. Is this really something they can own? What other huts can you think of? The jury is still out with this decision.

As for Circuit City, which shuttered its 567 U.S. stores last January, truncating its name didn't provide a panacea for its fiscal ills. In 2007, a new store format was introduced with a new, shorter name -- "The City". The new, "circuit-less" name didn't result in solvency. It is interesting to note that after Systemax Inc. acquired the brand, the Circuit City moniker was reinstituted.

Back to "The Shack". For RadioShack there is a need to compete with Best Buy, the numero uno of electronics retailers. But I doubt we’ll see Best Buy rebrand itself as "Buy" anytime soon.

One of the weaknesses with the word “shack” is its alternative meaning, shanty, a crude hut or cabin. This is hardly a positive association for a venerable, and once omnipresent brand, trying to freshen up its image.

"The Shack" also faces derogatory non-trademark meanings, much like Kool-Aid and Spam have acquired, as discussed by Steve Baird here. One blogger suggested images of a dark and isolated place where very bad things happen, and it is a little too close to "The Shaft" for my liking.

Cycling fans such as me wonder about the recently announced Team RadioShack Pro-Tour cycling team. Will Lance Armstrong, George Hincapie, Levi Leipheimer, and Andreas Klöden actually end up riding for "Team Shack"?

Can RadioShack truly own "The Shack"? What should Shaq have to say about this? Should he become the next spokesman for "The Shack" in between Comcast ads? Or maybe the B-52s could grind out a revised version of Love Shack?

A name or a logo is not a brand. The entire experience you have with a company defines the brand. So changing the name and doing "thumbthing" cute with the logo, isn't addressing the brand holistically.

I question the wisdom of truncating RadioShack at a time the company is trying to resurrect its faltering brand, particularly if "The Shack" moniker lends itself to negative brand associations. This is a time for clarity, not confusion or misdirection.

Performing a "truncatomy" to gain relevancy risks generating non-trademark meanings sure to vex RadioShack brand managers and lawyers, and ultimately, perhaps, render "The Shack" irrelevant.

—Randall Hull, The Br@nd Ranch®

First, one question worth asking is whether it is reasonable for these individual defendants to anticipate being sued in Minnesota for alleged computer repair activities outside of Minnesota. It is not clear to me from the Complaint whether either defendant actually operated or conducted business in Minnesota. Will there be an effort to dismiss the case by challenging personal jurisdiction? Basically, this is a popular legal argument and defense that the courts in Minnesota don't have the authority to hear a case involving the defendants because they don't have the necessary "minimum contacts" with Minnesota for the case to go forward there. 

Second, it is worth noting that Best Buy selectively asserted two Geek Squad service mark registrations (U.S. Reg. Nos. 1,943,643 and 2,744,658) -- those that are over five years old and also have achieved incontestable status. Given that the term "geek" has a recognized slang meaning with respect to the field of computers ("a computer expert or enthusiast (a term of pride as self-reference, but often considered offensive when used by outsiders."), it is curious that the Trademark Office has not employed this definition in requiring a disclaimer of the descriptive term "geek" in connection with computer repair services. By selectively pleading only incontestable registrations, Best Buy is able to foreclose a legal defense on the ground that the registered mark is not distinctive and merely descriptive, relying on the U.S. Supreme Court's decision in PARK'N FLY, INC. v. DOLLAR PARK AND FLY, INC., 469 U.S. 189 (1985).

Third, given that the recognized meaning of "geek" has direct application to the services provided under the Geek Squad mark, one has to assume that the scope of rights or the strength of the Geek Squad mark will be put at issue (see my previous post concerning trademark strength here), if this case actually is defended. As you might imagine, given the dictionary meaning, there are more than a few other "geeks" out there already providing or planning to provide the same or similar services and goods, all or nearly all post-dating the 1994 first use date for Best Buy's Geek Squad mark. For example: here (Geek I.T. Just Geek It), here (Geek), here (Geek by Phone), here (Cheap Geek), here (Geek Choice), here (GeekSugar), here (GeekBucks), here (Geek in Pink), here (A+ Computer Geek), here (Geek 911), here (Free Geek), here (Geek.com), here (TechnoGeek), here (GeekTeks), here (GeekSurance), here (Seek a Geek), here (GeekDesk), here (GeekOfficecalls), here (Geek City), here (Beep-a-Geek), here (Ask the Geek), here (VipGeek), here (Geek on the Run), here (When a Tech Isn't Enough, Call a Geek!), here (Not Just Any Geek), here (Geeks! GetYourGeek.com), here (Dial a Geek), here (GeekFleet), here (Speak With a Geek), here (Geek Rescue), here (How-To Geek), here (Geek for Hire), here (Geek Ghost), here (Geek Call!), here (Geek in a Box), here (Don't Hire a Geek, Hire a Pro!), here (1-800-905-GEEK), here (GeekWerkz), here (Call a Tech Not a Geek), here (Click-A-Geek), here (ElectroGeek), here (1 800 GEEK HELP), here (Geek National), here (Where No Geek Has Gone Before), here (The Geek Goddess), here (Don't Call a Geek When You Can Call an Expert), here (Geekabytes), here (GeekOnline), here (Geek-Client Privilege), here (Why Call A Geek When You Can Call A Friend), here (GeekForce.Biz), here (Geek Boutique), here (Rent-A-Geek), here (Phone A Geek), here (The Geek Patrol), here (Geek Housecalls), here (Beep-A-Geek), and here (1 800 Be A Geek).

Seems safe to say, at this point in time, that the field of "geek" marks concerning computer products and services is more than a bit crowded, which would typically lead to a conclusion of diminished or narrower trademark strength (see my previous post on Twitter and Trademark Enforcement and Protection):

"A trademark owner's failure to take action against the unauthorized use of its trademark by third persons can result in an abandonment of the mark, but only if the unauthorized use is so widespread that the designation loses its significance as an indication of source or sponsorship. More typically, the fact of third-party use is relevant only to the 'strength' of the mark, and hence to its appropriate scope of protection." Restatement of the Law (Third) Unfair Competition 313 (1995).

It's not as though Best Buy has failed to take any steps to enforce the Geek Squad trademark, for example, it sued Geek Housecalls in 2004, and it opposed registration of Geek Housecalls, Speak With A Geek, and Geek Rescue, but those marks ended up becoming registered despite the oppositions. It also filed extensions of time to oppose 1-800 905 GEEK, Geek Choice, and Beep-A-Geek Computer Services, but it never actually filed oppositions, and those marks are also now federally registered by other parties. With respect to more successful efforts, Best Buy opposed registration of the mark The Geek Patrol, Rent a Geek, and the slogan "Comtech We Beat The Geeks," and each of those applications has been abandoned. Moreover, in 2007 Best Buy obtained a Consent Judgment against Geek Brigade, located in Missouri. However, all this just makes one wonder how Best Buy determines exactly which "geeks" to patrol?

Judging from Paragraph 3 of the Prayer for Relief in the present Complaint against Geek Patrol, Best Buy is asking the Court to enjoin any uses of "Geek" by the defendants: "[U]sing . . . materials . . . bearing the words 'Geek,' 'Geek Squad,' 'Geek Patrol,' 'Geek Squad Patrol,' and any other mark, word, or name confusingly similar to . . . GEEK SQUAD . . . ." Given the defined meaning of the term "geek" and the rather prolific landscape of third parties, the requested prohibition on "Geek" appears to overreach. Perhaps this lawsuit will provide Best Buy with an opportunity to clarify its trademark protection strategy and articulate a more appropriate scope of protection for the Geek Squad mark.

Last, a boilerplate phrase in Paragraph 7 of the Complaint against Geek Patrol caught my attention, since it is not needed in order to prevail, and it only appears to provide the defendants with an opportunity to probe some rather unfavorable press Best Buy has received for lawsuits involving alleged improper conduct of certain Geek Squad Agents: "Best Buy . . . through continuous and uninterrupted use of the GEEK SQUAD Marks, has earned a reputation for knowledgeable, courteous, and outstanding customer service, as well as quality products. This reputation, goodwill and name recognition have been derived in part, from its commitment to service, satisfaction, and quality." (emphasis added)

Only time will tell whether this case will play out to be a real "Battle of the Nerds" or leave all of us trademark dorks to watch VHS reruns of "Revenge of the Nerds" instead.