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Best Buy Gets “Geeked Up” Over Trademark Protection

Posted in Trademark Law

By Zachary Wadlé

The term “geek” is no longer a pejorative term. Just ask consumer electronic retail giant Best Buy. The chain recently threatened online rival Newegg.com with legal action, arguing that its Geek On advertising slogan sounded too similar to Best Buy’s tech support service, Geek Squad. Newegg responded by posting Best Buy’s cease-and-desist letter on Facebook and suggesting that Best Buy was attempting to subjugate geeks everywhere. Newegg.com’s posting generated substantial negative reaction towards Best Buy from other self-professed geeks who took issue with Best Buy’s efforts to claim sole rights to “geek” status (and trademark rights).

In its defense, Best Buy says it is just narrowly protecting its Geek Squad trademark against overzealous competitors like Newegg.com. In fact, federal records show that Best Buy has disputed more than a dozen geek-themed trademarks in the past decade, including Rent a Geek, Geek Rescue and Speak With A Geek. But why does a company like Best Buy risk the negative publicity associated with threatening competitors like Newegg.com with legal action over “geek” terminology? The answer is that companies that don’t aggressively defend trademarks, even against seemingly innocuous intrusions, risk having courts decide that they abandoned the trademarks later when more substantive disputes crop up.

Companies like Best Buy that have well established trademarks like “Geek Squad” devote substantial resources to protecting their trademark portfolio from use by competitors. But even smaller companies with valuable trademarks need to be diligent about protecting their name(s) in the marketplace, lest they lose or weaken their trademark rights. Below are several important considerations businesses must consider to avoid erosion of valuable trademark rights:

·         Failure to use the trademark — Since trademark rights are based on use, a trademark owner must continue to use the trademark properly in order to avoid forfeiture of rights by abandonment. Non-use occurs when a trademark owner stops using the mark and does not intend to resume use. Intention not to resume use may be inferred from a trademark owner’s failure to use the mark for two consecutive years. Once a mark is deemed abandoned, all rights to it are lost.

·         Failure to enforce your rights against infringers — If you continually allow known infringers to violate your trademark rights, you may effectively waive the right to challenge their use. While this might not result in outright cancellation of your trademark registration, you undermine your trademark rights by voluntarily adopting a very narrow scope of protection.

·         Authorizing uncontrolled use of the trademark — Trademark rights can be lost if you license the trademark to others but don’t take adequate steps to monitor the products or services associated with the trademark. Trademark law fundamentally grants you exclusive use of the trademark in exchange for giving the consuming public a reliable indication of source and quality. If the source and quality of goods associated with a mark becomes diluted or ambiguous, trademark rights could be lost.

·         Generic use — Generic use refers to the situation in which a trademark becomes so familiar that the distinction of the mark diminishes. Examples of a generic marks include “aspirin” and “escalator.” Rights to those trademarks were lost because appropriate steps were not taken to prevent the public from coming to regard the marks as generic products or services, rather than individualized brand names.

With these consequences in mind, it is understandable why Best Buy is sensitive about its geeky trademark. Vigorous trademark protection is something all businesses with valuable brands must consider irrespective of public reaction. For Best Buy, possibly upsetting the geek community at large is the price to pay for maintaining strong trademark rights.