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Two Advantages of Monitoring Use of Your Trademarks

Geek Squad Standard VW Beetle

Geek Squad Standard VW Beetle

You’ve probably read about the recent dispute between Best Buy, owner of the “Geek Squad” trademarks, and Father Luke Strand of Holy Family Catholic Church, (former?) owner of a VW Beetle adorned with a “God Squad” logo. One of the ways that Best Buy uses the Geek Squad trademark is in a logo form on VW Beetles. Best Buy became aware of Father Strand’s use and contacted him and requested that he stop using his logo, alleging trademark violations.

Father Strand's "God Squad" Vehicle

Father Strand's "God Squad" Vehicle

After usage or registration of a trademark, startups and small businesses tend to focus solely on building the goodwill associated with the trademark. After all, that is the main point of the trademark, right? Unfortunately, with the rights come some responsibilities. One of those responsibilities should include monitoring the use of the trademark. Monitoring is primarily to detect infringement and detect improper usage of the mark. For emerging businesses, two key advantages of monitoring a trademark’s use include:

1. Decreased potential for infringement, lawsuit, and damages

Early notice of another party’s use of a mark in a confusingly similar manner gives both parties more viable solutions to the problem. The potential for adversity is less, as the potential infringing party has less of a time, money, and emotional investment in use of the mark. For example, tech maven Gina Trapani was in the early stages of working on an application formerly named “Think Tank” when another company alerted her to their prior use. The other company cordially approached her and the “Think Tank” application became the “Think Up” application. According to Gina Trapani (This Week In Google Podcast at 70:15), the situation was amicably resolved. The situation was resolved before two “Think Tank” apps were released to the market, end users were confused, and  marketing budgets were spent. Because the second “Think Tank app” had not been released, infringement may not have occurred. And if there was infringement, the damages were minimized.

2. The scope and validity of the trademark is maintained

A trademark can be invalidated by becoming “generic.” A popular example is when the “Aspirin” trademark became generic. Consumers used “Aspirin” to refer to any analgesic and the mark lost its function as a source indicator, thus it was eventually invalidated. In the Geek Squad situation, Best Buy currently has a certain scope of protection in the “Geek Squad” mark. Because Best Buy has spent time and money using the mark, a typical consumer can easily recognize the logo. Father Strand apparently is/was using a similar mark, thus slightly chipping away at Best Buy’s scope of protection. Suppose over the course of several years several other parties start using a similar logo with “Greek Squad,” “Great Squad,” “Geek Pod,” and “Geek God,” text. All of those uses further erode Best Buy’s scope of protection. Then if Best Buy decides to assert infringement claims against later parties, United States trademark law limits the scope of protection of the “Geek Squad” mark. For that reason, it is in Best Buy’s interest to act early. Similarly, monitoring the usage of a mark can alert a trademark holder of improper usage so it can act to prevent the undesired results.

The ways in a trademark may be monitored vary from the free and simple to more costly and thorough. Simple low cost approaches to monitor a might be services such Google Alerts, which monitor the publicly available internet. A more costly, thorough approach can include additional sources such as  trademark filings, domain name registrations, industry periodicals, and other sources. This may be done manually or via the services of a trademark attorney or trademark monitoring company.

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