Geek Squad Sends Cease-and-Desist Letter To God Squad

An anonymous reader writes "A Wisconsin priest has God on his car but Best Buy's lawyers on his back. Father Luke Strand at the Holy Family Parish in Fond Du Lac says he has received a cease-and-desist letter from the electronics retailer. From the article: 'At issue is Strand's black Volkswagen Beetle with door stickers bearing the name "God Squad" in a logo similar to that of Best Buy's Geek Squad, a group of electronics troubleshooters. Strand told the Fond du Lac Reporter that the car is a creative way to spur discussion and bring his faith to others. Best Buy Co. tells the Milwaukee Journal Sentinel that it appreciates what Strand is trying to do, but it's bad precedent to let groups violate its trademarks.'"

Parody?

[The MAZZTer]

Can't he claim this is a parody of Geek Squad cars? IANAL so I dunno how this works.

About time...

[Tactical Bacon]

Considering how virtually every religious sticker I see on a car is a (poorly done) rip-off of an existing trademarked character or logo, it's kind of refreshing to see them actually get called on it. Thou Shalt Not Steal. Unless it looks cool and you can make a mint by altering it to promote your church...

Re:Attn lawyers

[Wilden2003]

If I want to open up geek squad plumbing there is nothing they can do about it.

Not true. They can sue you, even if they have a strong belief that they will lose.

You can be sued for any reason, by anyone. And in many cases, he with the most money, wins.

Look at RIAA, SCO, ORACLE, various patent trolls, etc.

Re:Srsly?

[hey!]

OK, here goes. The issue is not that the church is creating customer confusion by between its services and Best Buy's. The issue is that its misappropriation of the trademark *dilutes* the value of that trademark to its rightful owner.

There are classes of ways in which dilution can occur, both of which potentially apply here: loss of distinctiveness, and tarnishment. (1) Best Buy has invested considerable money in creating a recognizable symbol. By misappropriating that symbol, the church is denying them the benefit of that investment by reducing the distinctiveness of the service mark. (2) Many of Best Buy's potential customers may have negative opinions of the Catholic Church because of its handling of the clergy sex abuse scandal. The church's misuse of Best Buy's service mark "tarnishes" that mark with a scandal to which Best Buy is not a party. Even supposing you think such a reaction to the scandal is unreasonable and excessive, that reaction should be the church's problem, not Best Buy's. If Best Buy drove around in cars emblazoned with the ecclesiastical arms of the local archbishop, he'd have a right to object that the dignity of his see shouldn't be tied to the quality of service Best Buy offers its customers.

Both of these arguments hinge on the fact that the logo used on the vehicles is obviously a copy of the Geek Squad logo. It is simply not credible that the priest arrived at this design on his own. If he'd come up with the "God Squad" name and his own logo, that would be a different matter. You can have a "Speedy Pizza Delivery" and a "Speedy Muffler Service" because they're in different industries, but if the pizza shop copies the Speedy Muffler trademark to promote their business, they've gone over the line.

In summary, there gray areas in trademark use, but this use is not one of them. Clearly the church is violating Best Buy's trademark rights. I don't think they are intending harm, and I think in cases of such non-commercial uses it might be nice if the trademark owner was polite and understanding rather than threatening. Nonetheless, the church really ought to cease and desist using Best Buy's trademark for its own purposes, even if it believes those purposes are admirable.

Re:Logo

[Rob the Bold]

GM got into some trouble when they named a Chevy a "Beretta". The armorer of the same name took them to court [wikicars.org] for cheapening the brand but the resulting out of court settlement [beaterreview.com] was more symbolic than anything else. Perhaps the gun maker realized that it was bringing ridicule on itself when "Car and Driver" did a head-to-head comparison of the two Berettas, finding a pistol had better acceleration, but the coupe had more passenger room.

Re:Logo

[russotto]

Trademarks only apply in specific markets.

Nope; there's a winner-take-all clause. If you can demonstrate that your mark is famous (and the Geek Squad mark might be), you can control it in all markets. It's a horrible law (like much of copyright, trademark, and patent law), but it's there.

Re:Srsly?

[Theaetetus]

OK, here goes. The issue is not that the church is creating customer confusion by between its services and Best Buy's. The issue is that its misappropriation of the trademark *dilutes* the value of that trademark to its rightful owner.

Nice analysis, but you missed one part that you touched on:

In summary, there gray areas in trademark use, but this use is not one of them. Clearly the church is violating Best Buy's trademark rights. I don't think they are intending harm, and I think in cases of such non-commercial uses it might be nice if the trademark owner was polite and understanding rather than threatening. Nonetheless, the church really ought to cease and desist using Best Buy's trademark for its own purposes, even if it believes those purposes are admirable.

Yes, it's almost certainly dilution under 15 USC 1125(c) (Lanham Act sec. 43). However, under under 15 USC 1125(c)(4)(B), "noncommercial use of a mark" is not actionable. It's unlikely that the priest is engaging "in commerce", nor would any Federal court be willing to call charitable donations to a church "commerce" within the meaning of the commerce clause, since they would run up against all sorts of political backlash. So, as long as he doesn't start selling "God Squad" coffee mugs or t-shirts or the like, a Federal court would likely lack subject matter jurisdiction.