Duets Blog : Creativity and the Law: DuetsBlog

Kool-Aid "is a brand of artificially-flavored drink mix owned by the Kraft Foods Company," coined by inventor Edwin Perkins as "Kool-Ade" back in 1927. After being correctly or incorrectly associated with the 1978 Jim Jones cult-driven mass suicide known as the Jonestown Massacre, Kool-Aid has spawned an additional and negative non-trademark meaning:

"The saying 'Do not drink the Kool-Aid' now commonly refers to the Jonestown tragedy, meaning 'Do not trust any group you find to be a little on the kooky side,' or 'Whatever they tell you, do not believe it too strongly.' Fox News commentator Bill O'Reilly is famous for using the term in this manner."

"Having 'drunk the Kool-Aid' also refers to being a strong or fervent believer in a particular philosophy or mission — wholeheartedly or blindly believing in its virtues." So, based on these alternate and negative meanings, blogs like www.dontdrinkthekoolaidblog.com exist. I suspect that these non-trademark meanings of Kool-Aid have frustrated more than a few Kraft brand managers, marketing types, and lawyers over the years.

Mickey Mouse, the creation of Walt Disney in 1928, has become a valuable brand and icon of The Walt Disney Company over the last several decades. However, there are also pejorative uses of the brand name that Disney apparently has learned to tolerate: "'Mickey Mouse' is a slang expression meaning small-time, amateurish or trivial. In the UK and Ireland, it also means poor quality or counterfeit." Mickey Mouse is also defined as informally meaning "useless, insignificant, or worthless," and "trivial or petty."

Spam is a well-known, probably famous, brand of canned and processed meat, owned by Minnesota-based Hormel Foods. It was the butt of jokes in a popular Monty Python sketch, first televised in 1970, and as a result, years later the Spam brand name (coined in 1937) acquired an alternate and negative meaning within the world of electronic communications, namely, junk, undesired, or unsolicited e-mail. Something most people with a computer and e-mail account despise. Probably the only types who don't despise this kind of spam are those who flood the world wide web with it and perhaps those who build businesses and software products to combat the serious problem of spam e-mail. This alternate and negative meaning of Spam is so prevalent that software manufacturers have developed their own brands containing the once single-meaning Spam brand name. For example, SPAMfighter is federally registered for "computer software for eliminating unsolicited commercial electronic mail."

Now, back to Twitter, and to what some call "Drinking the Twitter Kool-Aid."

A possible connection between these four brands (Twitter, Kool-Aid, Mickey Mouse, and Spam) came to me after watching a Kevin Spacey discussion on The Late Show with David Letterman, where Dave and the Academy Award-winning actor discussed Twitter for over four minutes, in which "K-Spa" starts the discussion by admitting that his "business partner" made him "drink the Kool-Aid," that is, Twitter Kool-Aid, implying that the use of Twitter is kooky, or at least promoted by kooks. After more than four minutes of discussing Twitter, and despite touting his "over 800,000 followers" on Twitter, a hilarious Spacey appeared unable to make a compelling case for the beneficial use of Twitter, leaving Letterman to end the conversation by stating, "You know what it reminds me of, oh yeah, a waste of time." Apparently, Dave had harsher words for Twitter back on April 24 when he referred to it as "stupid crap." Others have dubbed it "permission-based stalking."

It appears that Letterman is not the first to have come to the same conclusion about Twitter being "a waste of time." Others, including our own Dan Kelly, certainly have questioned time spent using Twitter. Indeed, a search on Google for "Twitter waste of time" is so popular that it appears as a ready-made search phrase option on Google after typing the character string "Twitter wa" -- and this search query actually yields 30,700,000 hits. The number one hit on Google using this search query agrees that it is, "unless you use it in a way that isn't." Given this growing negative dialogue, one has to wonder, will the public embrace a new meaning of Twitter, basically, a single word replacement for the clunkier three-word phrase "waste of time"? Instead of frittering one's time away, might you be accused of "twittering" your time away, even if you're no where near a computer, handheld device, or cellphone? Will these alternate and negative "time wasting" meanings begin to appear in dictionaries, opening the floodgates to additional undesired uses that may be difficult or impossible to control?

I submit that there are plenty of uses that the law is simply not prepared to stop. Knowing which are which is, of course, important. In addition, this is where the close collaboration of marketers, trademark types, and perhaps most importantly, PR gurus is necessary and critical, to help brand managers prevent their brands from spawning alternate and negative meanings that can distract from or undermine favorable brand development and management.

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.

The Northern District of Illinois recently discussed the doctrine of descriptive—or classic – fair use—when it denied a request for a temporary restraining order filed by Lettuce Entertain You Enterprises, Inc. (“LEYE”) in connection with its complaint for trademark infringement against Leila Sophia AR, LLC, and its principal, Shahram Tehrani (collectively, “Tehrani”). LEYE is the owner of over 70 restaurants nationwide (including Mon Ami Gabi and Maggiano’s Little Italy, as well as some in our fair Minnesota) and takes issue with Chicago-area restaurant owner Tehrani’s use of “Lettuce mix” and “Let us be” (replete with images of lettuce heads) in a temporary sign erected above a soon-to-open and as-yet publicly unnamed restaurant. Interestingly, the Court limited its analysis and its decision to the “Let us be” portion of the sign.

The Court recognized LEYE’s decades-long and extensive use of the word LETTUCE to identify its restaurant services in the following family of marks - LETTUCE ENTERTAIN YOU ENTERPRISES, LETTUCE ENTERTAIN YOU, LETTUCE, LETTUCE PARTIES, and LETTUCE PLANET. At the end of the day, however, the Court bought Tehrani’s argument that his use of “Let us be” was fair because 1) he was not using this portion of the sign as a service mark – that is, to identify his business as a source of restaurant services under the terms of the banner and 2) he was using the terms on the banner to describe his services. 

Because the fair use analysis must assume that the defendant is using the plaintiff’s marks, the Court analyzed the nature of “the message conveyed through use of the marks” and determined that Tehrani’s “use conveys a meaningful message other than that claimed by” LEYE, namely that Tehrani uses “Let us be!” not to describe his restaurant, but to “express protest of LEYE’s aggressive action against Tehrani’s intended use of the word ‘Lettuce’ as a service mark.”

Thus, the Tehrani is free to use his parody for the time being. As the Court did not address his use of “Lettuce mix,” it remains to be seen whether Tehrani will enjoy equivalent freedom to use his puns as well.