The Trade Mark Battle of the Geeks

 It was once an insult used to ridicule computer experts.  Now the term ‘geek’ is a highly-sought after trademark term, which appears to have transcended parody and now denotes knowledge, learning and expertise…..Well, according to US electronics giant, Best Buy, it does. 

Best Buy claims to own the word 'geek' and is vigilant in stopping any uses that it feels infringes its ‘Geek Squad’ trade mark.  Best Buy's founder Robert Stephens argues that companies risk losing large disputes if they don't pursue minor cases.   Amusingly, he told the Wall Street Journal recently that he had allowed several school chess clubs to call themselves 'geek squads.'

Under trade mark law, you must prove that other uses are likely to cause confusion in the marketplace.  The first stage in any dispute is a ‘Cease and Desist’ order or request to halt an activity (cease) and not to take it up again later (desist); or else face legal action.

While it’s important to protect your trade mark, it’s also important not to alienate your customer base with over-zealous action.  Best Buy’s recent action against US company, Newegg, in response to its ‘Geek On’ marketing campaign, has achieved the opposite effect of what Best Buy had intended. 

The dispute has generated acres of publicity for Newegg, which also played an ace card in posting the Best Buy’s ‘Cease and Desist’ letter on its Facebook page.  Newegg’s supporters were suitably outraged and rallied to support the company, driving further bad feeling towards Best Buy. 

Trademarks are there to protect your brand, but use them wisely.  The brand must behave in a manner consistent with its brand values or the customer will lose faith in its qualities.

Top Facts on Trade Marks  

  • Your brand / company name is an asset. Protect it.
  • Be warned that registering your company or product name with Companies House does not give you any trade mark protection, nor does it give any rights to use that name.
  • A registered trademark allows you to:
  • use the mark on your goods and services and;
  • exclude others from using the same or very similar mark on same or related goods and services
  • Choose which of the 45 classes you want to register your goods of services in. Two companies can own the same trade mark as long as they are registered for different products.
  • Trade marks are not costly (from £200) and they last 10 years.
  • A trademark should be “capable of distinguishing” the trademarked goods or services from those of other traders.
  • You can only use ® if your trade mark is registered.  ™ can be used on registered and unregistered trade marks.
  • To see if your trade mark is already in use, you can search the Intellectual Property Office’s (IPO)     database at www.ipo.gov.uk/tm/t-find/t-find-text/, although please be warned, this will only bring up direct matches and is not foolproof.

For more information on how to apply for a trade mark go to www.trademarkdirect.co.uk.


*****


By Mark Kingsley-Williams, founder of Trade Mark Direct.


Popular posts from this blog

Word Marks? Logo Marks? What’s The Difference?

  So a trademark is your brand, which can be in a form of a word, picture, symbol, or a combination of these. Interestingly enough, 3D objects and sounds can also be registered aside from word trademarks and logo marks. What it does, is to seperate your brand from other goods and services that your competitors may offer. You should consider owning a trademark because it protects you and your consumers from counterfeit and fraud. Also, legal action for a trademark infringement is relatively cheap, sometimes as little as a few thousand pounds, compared to the hundreds of thousands of pounds you have to pay for an action claim of passing off in UK, same goes in the US. Trademarks allow the Trading Standards Officer or the police to criminally charge against counterfeit who use your trademark without your consent. It’s a good way to protect your hard earned good name, don’t you think? But what exactly will you register? A  word mark  registers the word itself you want to use, Apple/Puma/Zy
Read more

Trademark Registration dispute over Keep Calm and Carry On

Image
   WE NEED YOU! Join us to fight for the right of UK businesses to use the much loved slogan ‘KEEP CALM AND CARRY ON’ When  ‘KEEP CALM AND CARRY ON’  was used by the British Government in 1939, Britain was facing a possible invasion. Today, we are seeing the long arm of Europe encroaching on our national heritage again. The EU has granted an EU Community Trade Mark to  ‘KEEP CALM AND  CARRY ON’  meaning that only one company may use the slogan for  clothing, mugs, posters and other memorabilia. This could potentially put  many companies out of business. This is wrong and we do not believe it would have been accepted by the UK Trade Mark Registry for the following reasons: ‘KEEP CALM AND CARRY ON’  is part of the UK’s national heritage, first being used in 1939 on government posters to strengthen morale in the face of a possible German invasion Prior to the trade mark being registered, many businesses used  ‘KEEP CALM AND CARRY ON’  as decoration on a wide variety of goods This means th
Read more