What a Croc!

Posted on February 2, 2010 by Guest Blogger

It's not every day you get a chance to use that phrase in a headline. But, what may become known as the "The Cayman Kerfuffle", presents the perfect opportunity.

Would a reasonable person find these confusingly similar?

         

 

$51,000 Blue Cayman                                                      $30 Blue Cayman

Let's see, one is a sleek, pricey, well-engineered, high performance sports car that is available in a variety of colors, the other is a stubby, inexpensive, molded plastic clog-like sandal that is also available in a variety of colors. Hmmm.

Even though the Porsche vs. Crocs dust up was discussed widely in November 2009, the seeming inanity still grinds on my nerves. So I can't resist another airing.

If you missed the coverage, here is the kerfuffle catalyst from the Crocs, Inc. Form 10-Q:

"On May 11, 2009, Crocs Europe B.V. received a letter from Dr. Ing. H.c.F. Porsche AG ("Porsche") claiming that the Company's use of the "Cayman" shoe model designator infringes upon their Community Trademark Registration of the mark "CAYMAN" in class 25. Porsche is requesting that Crocs Europe B.V. immediately cease and desist use of the Cayman mark and pay Porsche's attorney's fees in conjunction with the issuance of the notice letter. On July 30, 2009 the Company was served with notice of an injunction against Crocs Europe BV's use of the Cayman mark in Germany. The Company intends to vigorously defend itself against these claims."

Granted, Porsche has a registered trademark for "Cayman" in several international classes including 025, which does encompass footwear, and sells a line of Porsche Design shoes, although, apparently, not under the Cayman label.

I might understand Porsche being embarrassed by the possible association with the popular foam resin clogs spotted on the feet of celeb-kinder in Hollywood, South Beach, and other trendy locales. But infringement? Seriously? Shouldn't Porsche be more embarrassed for making this an issue? Likelihood of confusion is doubtful, unless Porsche dramatically changes its fashion strategy.

Realistically, few people will confuse Crocs Cayman clogs for a Porsche Cayman sports car or one of their designer driving shoes. Fewer still will think they originate from Porsche. Should they, a quick check of the Crocs logo on the shoe itself would correct any incertitude.

Several thoughts arise: Since the Crocs Cayman line was available commercially as early as 2004, five years before the registration issue date of April 2009 for Porsche, does Crocs have prior rights? Should International Truck Intellectual Property Company, owner of the Cayman trademark in International Class 012, which includes sports cars, seek redress from Porsche for infringement? Should Lacoste file an amicus brief since they have an oblique interest? After all, a Cayman is a type of alligator, and should Porsche prevail -- I don't see how, but lets pretend – based on their interpretation of infringement and confusion, the Lacoste logo, shown below, would be a likely next target.

Stay with me on this. It is probable that people driving Porsche Caymans could also be wearing Lacoste clothing, so confusion of origin is surely immanent. Hey, is that a Cayman polo shirt you're wearing?

On the subject of confusion, perhaps the Cayman Islands should pursue Porsche and Crocs for infringement. It is likely to find both products on the Islands, even at the same time and place, and wouldn't the Cayman Islands have prior rights, if we follow the labyrinthic logic in this argument? Toss in people wearing Lacoste fashions, and since most can't tell a Cayman from a run of the pond alligator, it could start a whole reptilian-brand confusion-fest and who knows where that would lead!

This could become a Trademark Infringement Smackdown with, say, Crocodile Dundee headlining. Although, come to think of it, this has certain "The Real Housewives of Intellectual Property" (surely an oxymoron) qualities to it and could spawn a new reality series on Bravo. The notion is no more ridiculous than the Porsche accusation -- and indubitably more entertaining. 

OK, my tongue is tired of being in my cheek.

The old maxim "just because you can, doesn't mean you should" seems apropos. The ill will engendered by overly aggressive enforcement, where likelihood of harm is not apparent, is damaging to a brand, even one as famous and resilient as Porsche. It will likely appear to consumers as needless bullying. That perception can cost far more to rectify than any possible impact of the perceived infringement.

Who's the likely winner in this spat? Certainly not Porsche. Crocs stands to gain from the publicity generated by this action. It is not exactly the way a company wants to gain visibility, but as a creative guy managing brands, I'd take what I get and spin it into branding silk – at the expense of Porsche, of course.

Randall Hull, The Br@nd Ranch®

Tags: , , , , , , , , , , , , , , , , , , , , , , , , , , , ,
Request Info

See our or enter your information below to send us a quick message and we'll reply in one business day or less.

Your privacy is ensured. We will never sell, disclose, or trade contact information.

Surface Level Branding Runs Deep on This Athletic Field

Posted on December 14, 2009 by Steve Baird

Mark Image

To sports fans of this university, December has been a big month because their beloved team finished the 2009 regular football season undefeated (13-0) once again, winning yet another post-season BCS bowl game bid. Next month will be even bigger news if their WAC team happens to defeat TCU in the Tostitos Fiesta Bowl. To trademark types, however, the biggest news of all is what this university was able to accomplish last month at the U.S. Patent and Trademark Office.

You might be surprised to learn (I was) that the above image is the drawing associated with the single color trademark ("the mark consists of the color blue used on the artificial turf in the stadium") that this university was able to federally register in connection with: "Entertainment services, namely, the presentation of intercollegiate sporting events and sports exhibitions rendered in a stadium, and through the media of radio and television broadcasts and the global communications network." Hat tip to Brad Frazer of the Hawley Troxell firm, in Boise, Idaho.

Quick question, how does one render entertainment services in connection with a single-color trademark through the "media of radio broadcasts"? Does oral reference to the blue turf on the radio constitute use of the mark in commerce?

In any event, the identity of the university in question, is revealed below the jump, and it is, of course:

Boise State, a/k/a the Broncos, a/k/a The Blue, whose teams play on what some call Smurf Turf in Bronco Stadium (not to be confused with Invesco Field at Mile High, where the similarly-colored blue and orange Denver Broncos play their NFL football games on regular green, grass turf):

File:Bronco Stadium Blue Turf October 31 2009.JPG

As interesting as the registration of the blue turf trademark is, the timing of the decision to federally register is as well. Why? On September 9, 2008, the NCAA reported that Division II University of New Haven (located in Connecticut) "adorned their new blue field -- one of only two in the country -- at Ralph F. DellaCamera Jr. Stadium with a 50 x 30-foot Charger logo September 8 in preparation for the return of the UNH football program and membership in the Northeast-10 Conference." Two weeks later, on September 23, 2008, Boise State filed for federal registration of the blue-colored turf trademark, claiming over twenty years of continuous use. Given this timing, is there a battle of smurf turfs likely on the horizon?

If so, here's a question to ponder: Since Boise State didn't seek federal registration until after UNH commenced use of its own blue-colored athletic turf in West Haven, Connecticut, Boise State doesn't enjoy the substantial federal registration benefit of nationwide constructive until its later filing date, so the question becomes, does Boise State have enforceable prior common law rights in West Haven?

Boise State's Bronco Stadium apparently has sported blue-colored artificial turf since 1986, the first being blue-colored AstroTurf (1986-2001), then blue-colored AstroPlay turf (2002-2007), and finally, blue-colored FieldTurf (2008-present). So, might the answer depend on how many Boise State home games have been televised and/or viewed over the years in West Haven, Connecticut, or might it depend on whether The Humanitarian Bowl has been televised and/or viewed in a consistent enough manner in West Haven to acquire distinctiveness and establish prior common law rights there?

While it may be hard to imagine that Boise State home football games have been consistently and sufficiently aired or viewed in Connecticut to establish prior common law rights there, Boise State's Bronco Stadium also has been home to The Humanitarian Bowl since 1997, so there has been more than a decade of post-season bowl-game football played on Boise State's blue-colored turf. Now, how many of those games have been aired or viewed in West Haven, is beyond me.

With respect to validity, might there be a question of some yet-to-be-identified functionality, since one artificial turf manufacturer reports that "blue" is "probably the most popular" color choice for artificial turf? It would be interesting to explore the reason for this popularity.

On a broader note, will Boise State's success in the U.S. Trademark Office lead others to follow along this trademark path?

I, for one, would love to watch the beloved teams from my alma mater, The Iowa Hawkeyes, play football in Kinnick Stadium on a yellow-colored turf -- perhaps canary yellow, and 3M could sponsor a new post-season bowl game (not that we need another), let's call it The Post-It Bowl!

The problem is, of course, in January, and even December, Kinnick Stadium is likely to look rather white no matter what the underlying turf color may be.  
Tags: , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , ,

Does Your Eye Spy A Canary?

Posted on November 2, 2009 by Steve Baird

A couple of weeks ago I posted an Accountemps billboard advertisement that prominently features what appears to be a 3M Post-it brand removable adhesive note, and I asked whether it constitutes fair use, and whether 3M's permission is necessary to run the advertisement, since 3M owns a federal trademark registration for the color "canary yellow" in connection with these notes.

As the comments to that post reveal, some recognize the billboard image as a 3M Post-it note, and believe permission should be required to run the ad, others were unaware that 3M has a trademark on the color canary yellow, others believe that yellow adhesive notes are generic, and several apparently believe that even if the billboard depicts a 3M canary yellow Post-it note, no permission should be required. In fact, several pointed out that yellow adhesive notes can be obtained from a variety of sources, raising the question of how close those shades of yellow are to 3M's trademarked canary yellow?

So, just for you, I collected six different pads of yellow-colored adhesive notes and fixed them to a dark green background for a little follow-up quiz. Can you identify any "canary yellow" and name the sources of the six different yellow adhesive notes shown below (answers below the jump)?

(A) Unknown (unmarked yellow-colored removable adhesive note);

(B) 3M's Post-it brand "Pop-up Notes" (packaging states: The color "Canary Yellow" is a trademark of 3M);

(C) Target's Work.org brand "self-stick removable notes" (no reference to color or trademark);

(D) 3M's Post-it brand "Recycled Notes" (packaging makes no reference to canary yellow color or trademarks);

(E) Highland brand "Self-Stick Removable Notes" (packaging refers to Highland as being a trademark of "Minnesota Mining and Manufacturing" -- no reference to 3M, and no reference to "canary yellow" or color trademarks); and

(F) Office Max's "Self-stick Pop-up Notes" (no reference to color or trademark).

All of this raises a few more questions worth asking:

(1) Since (B) and (D) appear to both be 3M's Canary Yellow, why doesn't 3M mention the trademarked color on packaging for its Recycled Notes? Are the Recylced Notes not Canary Yellow?

(2) Since (A), (C), and (F) closely resemble the yellow shade of 3M's Highland brand (E), does that mean 3M views the Highland color and these others to fall outside the legal scope of protection for the Canary Yellow trademark?

(3) Where should a court draw the line in comparing color shades for purposes of determining likelihood of confusion? How should this be measured, by wavelength, colorimeter device, Pantone matching system? Doesn't a note's clear cellophane wrapper affect one's visual perception of color? What about in-store lighting differences, won't they affect one's visual perception too? How about when outside on billboard advertising, could infringement depend on the daily weather? Sunny days infringing, cloudy days non-infringing? Lastly, what about on-line uses of color? I found that I perceived the above collage of six different color squares differently depending on which computer and monitor I viewed them from.

Has any of this changed your view one way or the other about whether Accountemps needs 3M's permission to run the billboard ad?
Tags: , , , , , , , , , , , , , , , , , , , , , , , , , , ,

Fair Use of 3M's Post-It Note?

Posted on October 19, 2009 by Steve Baird

This billboard ad has appeared in various locations around the Twin Cities for some time now. 

Each time I saw it, I wondered whether it would be the last, given how vigilant 3M is in protecting its various trademarks and other intellectual property. This time, I had a camera handy to capture it.

Now it's time for some questions.

Is there any question that this Accountemps billboard advertisement prominently features a Post-It brand note?

After all, 3M owns a non-traditional single-color trademark and federal trademark registration for the color canary yellow "used over the entire surface" of "stationery notes containing adhesive on one side for attachment to surfaces." In case you're wondering, at least one dictionary defines "canary yellow" as "a light yellow." Other 3M trademark registrations related to the Post-It brand refer more broadly to "yellow," and are not limited to "canary yellow," here, here, here.

This billboard ad appears to be yet another example of a well-known, if not famous, non-traditional trademark being used in another's advertising, not for comparison purposes, but as a prop to help sell goods or services totally unrelated to those of the non-traditional trademark owner. Is the use necessary? Is it appropriate? Should it be considered a fair use, if made without permission? Why didn't Accountemps make the stationery note prop appear in a color that is not trademarked?

Is the use likely to cause confusion, keeping in mind that actionable confusion is not limited solely to confusion about origin or source, but also protects consumers against likely confusion about affiliation, connection, association, sponsorship, or approval?

Is the look of 3M's Post-It note a famous trademark? If so, it is entitled to dilution protection too. Section 43(c) of the Lanham Act protects against "dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury." If everyone started to depict a Post-It note in their ads would that tend to blur the distinctiveness of 3M's trademark or strenghten the brand? I'm thinking that trademark types and marketing types might have different takes on this question.

As you may recall, we previously have discussed the implications of using another's non-traditional trademark in advertising: Levi's Double Arcuate Design trademark and the shape of a Corvette from the 1960s.

So what do you think, does Accountemps need 3M's permission for this billboard advertisement?

Tags: , , , , , , , , , , , , , , , , , , , , , , , , ,

Who's Your Patty? or Where's Who's Your Patty?

Posted on September 21, 2009 by Steve Baird

As promised, here are some additional thoughts (beyond the very frank and practical non-legal advice already shared by Jason Voiovich) about Lion's Tap's trademark infringement case against McDonald's over the "Who's Your Patty?" slogan.

Here's the multi-million dollar question: What did McDonald's know and when did they know it? Those are questions likely to get a lot of attention in this case.

Could McDonald's have known about Lion's Tap's prior use of the "Who's Your Patty?" tagline from a drive by the single restaurant location? Not according to the exterior signage shown above.

Could McDonald's have known about Lion's Tap's prior use of the "Who's Your Patty?" tagline by checking for state or federal trademark registrations? No, Lion's Tap didn't register in Minnesota or attempt to federally-register the tagline until a week before filing suit, well after McDonald's had launched its "Who's Your Patty?" campaign.

Could McDonald's have known about Lion's Tap's prior use of the "Who's Your Patty?" tagline by conducting appropriate internet searches? Recognizing that most comprehensive trademark searches will examine the internet, here is where it might get interesting.

Just for you, I did a little poking around, and despite the fact that the current Lion's Tap website prominently displays the "Who's Your Patty?" tagline, The Wayback Machine (having archived updated content on Lion's Tap's website for these dates: November 5, 2005, December 27, 2005, June 26, 2006, January 26, 2007, January 27, 2007, December 1, 2007, and February 1, 2008), does not appear to show or document any use of the "Who's Your Patty?" tagline as late as February 1, 2008, the last time the site apparently was crawled by The Wayback Machine. Interestingly, those archived pages show other Lion's Tap taglines in use, such as: "Any Fresher and it Might Get Slapped," "Sponsoring the Napkin Industry Since 1977," "Yes, They Really Do Exist. Come See One for Yourself," and "Lions and Burgers and Fries, Oh My! "

So, where was the "Who's Your Patty?" tagline being used by Lion's Tap prior to McDonald's adoption and use of the "Who's Your Patty?" slogan? Was it being used in a way that McDonald's could have found it, using reasonable precaution and diligence?

You might be interested to know that my most recent visit to the Tap -- after the complaint was filed -- revealed surprisingly minimal use of the "Who's Your Patty? tagline within the restaurant interior (and none on the exterior of the restaurant). It wasn't on wall-board menus or the on-table menus, nor on any interior signage, at least that I saw. It did appear on one wall-mounted t-shirt with a price tag on it, and one of the servers was wearing a t-shirt bearing the "Who's Your Patty?" tagline.

Let's not forget that Lion's Tap is also claiming a "famous" mark in the "Who's Your Patty?" tagline, at least "famous" in Minnesota. What do you think, does this amount of use qualify for fame?

Stay tuned, as we continue to follow this very interesting case.

As a tangentially-related side note, ironically, Patty Wood, a real estate agent from Deer Park, Texas, appears to have beaten both Lion's Tap and McDonald's to the punch in registering the internet domain whosyourpatty.com.

UPDATE: Here.

Tags: , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , ,

Counting By Numbers, or Stripes? A Likelihood of Confusion Tale.

Posted on September 10, 2009 by Steve Baird

    

When it comes to scope of rights and trademark enforcement, as a trademark type, it's hard not to admire Adidas' success in preventing the use of two, three, and four stripes, when its long-standing federally-registered design mark consists of three stripes.

At least in the U.S., Adidas appears to have gained a one stripe buffer on either side of its powerful three stripe iconic symbol, so advocates for Adidas might say 2, 3, or 4 stripes, and you're out (of luck anyway).

(For some great coverage on Adidas' recent trademark enforcement activities, check out Seattle Trademark Lawyer).

How can it be then (within the hospitality industry), that no analogous buffer exists between 4&5, Motel 6, Big 7 Motel, Bel-Air Motel 7, Big 7 Motel (Chula Vista, California), Big 7 Motel (Valdosta, Georgia), Magnificent Seven, Seven Days, Super 8, and National 9 Inn, with them all happily coexisting (apparently) without any likelihood of confusion?

(Also, how can it be that Super 8 (apparently) doesn't control the Super8Inn.com domain?)

Perhaps it all comes down to what your trademark strength and likelihood of confusion analysis happens to count, stripes or numbers . . . .

Tags: , , , , , , , , , , , , , , , , , , , ,

Twitter, Twitter Everywhere -- But Will They Own the Tweet?

Posted on September 5, 2009 by Guest Blogger

For the last month or so I've been following the antics of Twitter as they attempt to assert rights to the word "tweet". Based on their completely inconsistent—one might even say schizophrenic approach, I feel justified in using the word "antics".

Until very recently, Twitter didn't seem to care much about what third-party apps were named. In fact, in a blog post from July 2009, founder Biz Stone said, "Regarding the use of the word Twitter in projects, we are a bit more wary although there are some exceptions here as well. After all, Twitter is the name of our service and our company so the potential for confusion is much higher. When folks ask us about naming their application with "Twitter" we generally respond by suggesting more original branding for their project. This avoids potential confusion down the line."

Note the phrasing: “suggesting more original branding”. What happens if the developers don’t take the suggestion? By allowing so many third party apps to use the name already, they’ve tacitly given permission for others to infringe on their trademark. If they then try to defend their trademark against the new filers, what can they say?

A look at the USPTO database reveals that although Twitterrific applied for a trademark in March 2009, they voluntarily dropped it in April, right around the time that Twitter started sending out cease and desist letters. Other applicants - Twitter Twail, TwitterTag, TwitterTool, and Twitter Package - still have active applications which have not yet been refused by the USPTO examiners.

But wait, what? Twitter's sending out C&Ds?

Dean Collins, developer of MyTwitterButler (a Windows Twitter app), received a C&D in August, which asked him to stop using the word "twitter" in his app name, along with a claim of violation of terms of services for the API. The letter says in part:

"As you are likely aware, Twitter's extensive and widespread use of its TWITTER trademark provides Twitter with strong and defensible rights in the mark, and has caused the mark to become well-known, if not famous, in today's online marketplace. Twitter owns trademark applications and registrations for its mark in the United States and numerous other countries for use in connection with its online services, which will provide Twitter with exclusive rights in the mark."

And here's where it gets more interesting. Collins posted the following comment to CNET on August 20th (SIC):

Speaking from personal experience www.MyTwitterButler.com was sent a C&D not only to change the name but cease selling the software that uses the Twitter API forever (which btw conforms to all of the daily account limits set by Twitter when using the API so that confuses us even more), however that's for another time.

My conciliatory gesture to Twitters legal representative was that I would be happy to rename my application www.MyTweetButler.com on the basis on Biz Stone’s blog post...only to be told that no Twitter wouldn't allow me to rename my application to Tweet as they also held the trademark to this as well.

So not only did they not want him to use "twitter", but they forbade him from using "tweet" as well! How does that work, exactly? Sam Johnston has written an excellent overview of the situation, so I'll summarize his points:

- In the same blog post in which he made the "suggesting more original blah blah blah", Stone revealed that Twitter was also trying to trademark the word "tweet" "because it is clearly attached to Twitter from a brand perspective".

- "Tweet" was essentially an organic term, developed by users, to describe a post on Twitter. Twitter itself, in its online documentation, says

Twitter always asks the question, "What are you doing?" Each answer to that question is considered a Twitter status update, or what people often call a "tweet."

strongly implying that it's not an officially sanctioned name.

- Twitter's application for the mark "Tweet" was filed in April of 2009 (remember, that's when those C&Ds started going out) but was initially refused in July. This was due to prior applications for marks containing the word "tweet": CoTweet, Tweetmarks, and TweetPhoto.

Speaking of trademark registrations, despite Twitter's attempts to assert some rights over "tweet" the applications keep coming in. Both Tweetalator and Tweet Beacon were submitted in July.

By the way, I checked with Collins at MyTwitterButler and as of August 25th, he told me "Apart from their lawyers stating I wasn't going to be allowed to just change the name to mytweetbutler.com there has been no progress. I’ve asked for them to specifically tell me what exactly my application is doing wrong against their API but am still waiting for more confirmation."

Let's get back to Stone's blog post. He says, regarding "tweet": [... W]e encourage the use of the word Tweet. However, if we come across a confusing or damaging project, the recourse to act responsibly to protect both users and our brand is important."

Twitter encourages the use of the word "tweet", which they demonstrated by sending out cease & desist letters and/or revoking Twitter accounts, even though Twitter's rights to the name is on shaky ground and they don't use "tweet" as an official word at Twitter, plus they've only just applied for a trademark but been initially refused, and they don't appear to be following up the threatening letters with any kind of action.

Seriously, it seems that Twitter can't make up its mind whether it should be nice to third party developers, or be big meanies. The key to good trademark protection - even if you don't have an actual registered trademark - is consistency. This means using the mark in a proprietary way all the time, not letting other folks get away with using it when you're not paying attention, and asserting your rights where you actually have some. Of course, Twitter needs to protect its intellectual property, but they should have had a strategy for how to do that early on, not as an afterthought. They own "Twitter", but should they prevent other people from using it? Are they really going to make Twitterrific, the most popular iPhone app for Twitter, change its name? Really?

Owning "Tweet", however, seems like a losing battle, and from the press I've seen, it's putting Twitter in a very bad light, especially from the developers' point of view.

—Laurel Sutton, Principal Catchword Brand Name Development
Tags: , , , , , , , , , , , , , ,

Percolating over Trademark Enforcement

Posted on August 26, 2009 by Karen Brennan

Recently, I stopped in a neighborhood coffee shop for an iced coffee. It was a fabulous little coffee shop in a neighborhood I don’t frequent and whose name I won’t mention. Anyway, while perusing the menu, I noticed they offered a blended coffee drink under the name Frappuccino.  Noting the teenager behind the counter, I did not feel it would be beneficial to provide a trademark tutorial or a warning as to how Starbucks would react to this use of its arguably famous trademark for identical goods. 

Sipping my delicious frozen beverage, I could not help thinking it would be a good blog topic to discuss the importance of trademark policing and enforcement.   Obviously, this is not always an easy task and these types of uses are especially difficult to detect.  In fact, Starbucks has been very active in protecting its trademark rights, even against small, mom-and-pop coffee shops which it discovers are using a similar name or logo mark such as Conga Coffee & Tea (similarly shaped green logo mark).  However, identifying an infringing name of a shop is one thing, but identifying an infringing menu item is a far more difficult task. 

 

Companies spend a lot of time and money developing brand names for products and services and many companies have hundreds of branded products in their portfolios.   An important part of branding is protecting those brands and companies need to determine how to best monitor their marks.  Employing a watch service is always a good idea for major brands and/or a company name.  However, the cost of a watch service is by the mark and can quickly add up if a company has numerous brands to protect.  Thus, a few suggestions as to steps a company can take to protect its marks include:

 

  1. Apply for federal trademark registration whenever possible;
  2. Proper and consistent use of the ® ™ symbols in connection with each and every brand;
  3. Undertake periodic Internet searches for potentially infringing uses;
  4. Create champions for your brand - highly loyal customers, distributors, retailers, and other partners, who will bring potential infringements to your attention;
  5. Internal education for employees to keep their eyes open and listen with an open ear when others bring potential infringements to light; and
  6. If you become aware of a potential infringement, take action sooner rather than later by sending a formal letter.  You may want to consider hiring a trademark attorney to send the letter; investing in a well written cease and desist letter will often pay off by putting an end to the infringement. 
Tags: , , , , , , , , , , , , , , , ,

Battle of the Nerds? Best Buy's Geek Squad® on Trademark Patrol

Posted on July 23, 2009 by Steve Baird

Mark Image   

Best Buy, owner of the Geek Squad brand since 2002, has filed a federal trademark infringement complaint in Minnesota against a pair of individual defendants apparently located in Missouri and California, for allegedly registering and using <thegeekpatrol.biz> domain and the names "Geek Patrol," "Geek Squad," and "Geek Squad Patrol". Here is a copy of the Complaint, including Exhibit A (Trademark registrations), Exhibit B (DomainTools.com print out), Exhibit C (Tollfreeda.com print out), and Exhibit D (Superpages.com print out).

For those of you interested in great entrepreneurial stories, Robert Stephens founded Geek Squad while a student at the University of Minnesota, riding his bicycle around Minneapolis to make computer house calls. The stylish collection of branded Beetles permitted Stephens to cover much more ground when making house calls or office calls. I actually had the pleasure of meeting Robert Stephens and toured his humble first office located above Moose & Sadie's cafe and coffeehouse blocks from downtown Minneapolis. He gave me and my wife what are now vintage Geek Squad t-shirts, obviously we should have had them autographed at the time!

My early and initial observations of the Geek Squad trademark Complaint are below the jump.

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.
Tags: , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , ,