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.