One of the more important requirements for maintaining a trademark is policing, the zealous pursuit of anyone who uses the mark without the owner’s permission. Unauthorized use, even parody in some cases, can tarnish the owner’s brand and cut into sales (See Trademarks & Parodies: The North Face versus The South Butt). But what about when that use
is in a totally unrelated field and the profits derived are spiritual rather than monetary in nature?
For the past several years, Father Luke Strand, an associate pastor at the Holy Family Parish in Fond du Lac, Wisconsin, has been driving around in his Volkswagen Beetle® with decals attached to the doors that read: God Squad. Anyone who’s needed technical support for electronic equipment in recent years is probably familiar with the Geek Squad® vehicles that transport “techies” from local Best Buy® stores on their house calls. Because the Geeks likewise drive VW’s with a similar logo, Best Buy decided to write a cease-and-desist letter, demanding that Father Strand remove the infringing logo from his car. Father Strand has since complied with Best Buy’s demands. Not totally unsympathetic to the priest’s mission, Best Buy offered to help him design a substitute logo that wasn’t as confusingly similar to their own.
What legal rights does Best Buy have in this case? According to records of the U.S. Patent and Trademark Office, BBY Solutions, Inc. (a subsidiary of Best Buy) is the owner of four federal registrations and a pending application for the Geek Squad logo. The goods protected by these registrations include a variety of computer peripherals and accessories, and even t-shirts; the services protected include the installation and repair of a wide range of consumer electronics. But none of the registrations claim Christian ministry services.
Does this mean that Best Buy has no grounds to go after Father Strand? Not necessarily. U.S. trademark law provides certain rights against dilution of so-called “famous marks” when those marks are “tarnished” or “blurred” by unauthorized use, even if that use isn’t in the same area of goods or services as the famous mark. Tarnishing involves the use of a mark in a disparaging or unsavory way, like using the Coca-Cola logo on bubble gum made to resemble cocaine. Blurring refers to the lessening of a famous mark’s selling power through use with unrelated goods or services. Although there’s no apparent evidence that Father Strand tarnished the Geek Squad logo, a case might be made that over time, consumers could associate the Geek Squad less with fixing computers and more with saving souls.
Another possible ground for infringement involves trade dress. Had Father Strand affixed the God Squad logo on the doors of a Chrysler PT Cruiser® or a Nissan Cube®, Best Buy probably wouldn’t have a case. But because the Volkswagen Beetle® is so closely associated with the Geek Squad, like the distinctive shape of the Coca-Cola® bottle, the “feel” of the vehicle could be considered trade dress. Maybe if the doors and roof of Father Strand’s care were white, an even stronger case could be made.
Any business has the right to defend its intellectual property from infringement. But when a Goliath like Best Buy goes after a David like Father Strand, the negative publicity can sometimes outweigh whatever benefit might be derived. Sometimes a fight with David is more fight than Goliath wants. And it doesn’t take a clergyman to know who ultimately won the first match between David and Goliath.
For the past several years, Father Luke Strand, an associate pastor at the Holy Family Parish in Fond du Lac, Wisconsin, has been driving around in his Volkswagen Beetle® with decals attached to the doors that read: God Squad. Anyone who’s needed technical support for electronic equipment in recent years is probably familiar with the Geek Squad® vehicles that transport “techies” from local Best Buy® stores on their house calls. Because the Geeks likewise drive VW’s with a similar logo, Best Buy decided to write a cease-and-desist letter, demanding that Father Strand remove the infringing logo from his car. Father Strand has since complied with Best Buy’s demands. Not totally unsympathetic to the priest’s mission, Best Buy offered to help him design a substitute logo that wasn’t as confusingly similar to their own.
What legal rights does Best Buy have in this case? According to records of the U.S. Patent and Trademark Office, BBY Solutions, Inc. (a subsidiary of Best Buy) is the owner of four federal registrations and a pending application for the Geek Squad logo. The goods protected by these registrations include a variety of computer peripherals and accessories, and even t-shirts; the services protected include the installation and repair of a wide range of consumer electronics. But none of the registrations claim Christian ministry services.
Does this mean that Best Buy has no grounds to go after Father Strand? Not necessarily. U.S. trademark law provides certain rights against dilution of so-called “famous marks” when those marks are “tarnished” or “blurred” by unauthorized use, even if that use isn’t in the same area of goods or services as the famous mark. Tarnishing involves the use of a mark in a disparaging or unsavory way, like using the Coca-Cola logo on bubble gum made to resemble cocaine. Blurring refers to the lessening of a famous mark’s selling power through use with unrelated goods or services. Although there’s no apparent evidence that Father Strand tarnished the Geek Squad logo, a case might be made that over time, consumers could associate the Geek Squad less with fixing computers and more with saving souls.
Another possible ground for infringement involves trade dress. Had Father Strand affixed the God Squad logo on the doors of a Chrysler PT Cruiser® or a Nissan Cube®, Best Buy probably wouldn’t have a case. But because the Volkswagen Beetle® is so closely associated with the Geek Squad, like the distinctive shape of the Coca-Cola® bottle, the “feel” of the vehicle could be considered trade dress. Maybe if the doors and roof of Father Strand’s care were white, an even stronger case could be made.
Any business has the right to defend its intellectual property from infringement. But when a Goliath like Best Buy goes after a David like Father Strand, the negative publicity can sometimes outweigh whatever benefit might be derived. Sometimes a fight with David is more fight than Goliath wants. And it doesn’t take a clergyman to know who ultimately won the first match between David and Goliath.
