Geek in Trouble — Best Buy Believes Geeks will Get it in Trademark Infringement Dispute with Newegg

Being that my brand is BrandGeek®, when I saw the Wall Street Journal headline, “Now That Everyone Wants to Be a Geek, Lawyers Have Been Called,” I thought trouble surely was headed my way.  Thankfully, I’m not pedaling electronics, nor religion via VW Beetle, so it appears I’m safe.  For now.  Imagine the panic when I first saw the headline in an e-mail from my friend Julie Markham at Greenlighted.  I could only imagine tomorrow’s headline, “Trademark Attorney Tried for Infringement,” but I knew I’d done my due diligence, so it had to be something else.

So what’s all the hubbub that resulted in a WSJ article and subsequent PC Nation article on Sunday?  Well, in essence, two electronics retailers are battling over use of the term GEEK as a trademark for their services . . .

Best Buy and Newegg both offer retail electronic sales and repair services.  On May 26, 2011, Best Buy sent Newegg a cease and desist letter, which Newegg then posted to Facebook on June 9, 2011.  The C&D instructs Newegg to cease infringing on Best Buy’s GEEK SQUAD mark, orange and black GEEK SQUAD trade dress, and Geek Squad Tie and Power Button design.  The letter emphasizes Best Buy’s expansive nationwide use of its GEEK SQUAD mark since 1994 in print and TV advertising, on www.geeksquad.com, on branded apparel and other promotional items.  Best Buy has three federal trademark registrations for GEEK SQUAD: one, two and three.  It claims a first use date of October 24, 2004 for “computer peripherals and accessories, namely, cables and connectors, surge protectors, universal power supplies and flash drives” and July 15, 2007 for “home theater and car electronics installation and repair.”  Two of the registrations are for the stylized mark shown above (albeit without claim to color), which I am sure Newegg will argue distinguishes the marks significantly.  I wonder why Best Buy did not register GEEK SQUAD (in standard character format, without claim to stylization) for “retail store services featuring electronics,” or “computer repair services.” Those seem to be the core services offered under the mark, which are at issue in this dispute.

Best Buy’s C&D also instructs Newegg to cease its disparagement of Best Buy employees, taking exception to Newegg’s characterization of Best Buy employees as “slovenly and uninformed” in its YouTube commercial. Of course, the commercial gained more attention from Best Buy’s reaction to it than from airing originally.   On June 6, 2011 Newegg responded directly to Best Buy, which it also posted on Facebook. Newegg’s response?   Predictably, it disagrees that GEEK ON infringes GEEK SQUAD.  Newegg asserts that Best Buy owns no trademark rights in the word GEEK alone, or the image of an unstylized power button, such as that used in the GEEK ON logo.  Newegg ignores the trade dress claim and denies that the store depicted in its YouTube advertisement depicts any specific retail establishment.  Additionally, Newegg indicates that it uploaded a revised version of its YouTube commercial, commencing with this disclaimer:

THIS ADVERTISEMENT PHOTOPLAY IS A WORK OF FICTION. ANY SIMILARITY TO REAL PERSONS (LIVING OR DEAD), BUSINESS ESTABLISHMENTS, PLACES, EVENTS, OR OTHER MATERIAL IS COINCIDENTAL AND UNINTENTIONAL. IT IS SOLELY INTENDED TO PARODY AND DRAW ATTENTION TO ANY BUSINESS ESTABLISHMENTS (BUT NONE IN PARTICULAR) THAT PROVIDE POOR CUSTOMER SERVICE, AND NO INFERENCES SHOULD BE DRAWN ABOUT THE IDENTITY, AFFILIATION OR LOCATION OF ANY PARTIES OR BUSINESSES DEPICTED. NO ANIMALS WERE HARMED IN THE MAKING OF THIS COMMERCIAL.

Neither party mentioned Newegg’s use of the tagline: TAKE IT FROM A GEEK, with which Best Buy apparently is not concerned (though I suspect that will change if this matter winds up in court).  What will happen next?  My guess is more public wrangling followed by one of two outcomes: amicable resolution (not looking likely) or a lawsuit.

Who will win?  You tell me.  Infringement happens when consumers are likely to be confused into thinking that there’s a relationship between parties that doesn’t actually exist.  Do you think consumers seeing GEEK SQUAD and GEEK ON will mistakenly believe that Best Buy and Newegg have a relationship?  Keep in mind what the courts will consider:

(1) Similarity of marks– overall commercial impression (sight, sound & meaning)

(2) Similarity of goods & services

(3) Similarity in channels of trade

(4) Level of consideration given to type of purchase (thoughtful of impulse)

(5) The fame of the prior mark

(6) Amount & type of similar marks

(7) Nature and extent actual confusion

(8) Whether there’s been concurrent use without confusion.

(9) The nature of the mark (house mark, family mark, product/service mark)

(10) Interaction between the parties

(11) The extent to which either party has exclusive rights

(12) Extent of potential confusion

(13) Other relevant facts relative to use of the mark

The WSJ article states that Best Buy has challenged more than a dozen geek themed trademarks in the past decade including Rent a Geek, Geek Rescue and Speak With A Geek.  Newegg must have adopted its GEEK ON mark with this known risk.  The question is whether it can leverage enough publicity from the dispute to offset the costs of defending its marks. What do you think?