If you weren’t sure whether God had as sense of humor, you need not look any further than Fond Du Lac, Wisconsin. That’s where you’ll find Father Luke Strand of the Holy Family Parish driving around town in a black Volkswagen Beetle with the words “THE GOD SQUAD” emblazoned on the side.
Strand recentely received a cease-and-desist letter from Best Buy, the Minnesota-based electronics retailer, alleging that he is violating the company’s trademark rights in “THE GEEK SQUAD.”
In any case, it looks unlikely that we will see Best Buy and Father Strand duking this out in court. According to the Milwaukee Journal Sentinel, “Best Buy is working with Strand to alter the God Squad logo in a way that it will still work for him without infringing on the Geek Squad trademark.”
So, assuming the problem is with the logo, what trademark “rights” does Best Buy have in the Volkswagen Beetle?
Is the car itself a “trademark”? In a way, yes. Trademarks encompass an incredibly broad subject matter, specifically: “any word, name, symbol, or device, or any combination thereof” so long as it functions as the indicator of the source of goods and/or services. Here, the car itself, as a whole, serves a trademark function (i.e., when you see a GEEK SQUAD car, you identifiy Best Buy/Geek Squad as the source of the services.
But Best Buy didn’t create the Volkswagen Beetle. Volkswagen quite clearly has its own trademark, trade dress, and patent rights that are embodied in the design, shape, and appearance of the Beetle. So how can we distinguish the respective rights of Best Buy and Volkswagen?
For example, what if Father Strand drove around Fond Du Lac in a green and white Volkswagen Beetle with the words “THE GOD SQUAD” on the side, but in a very different logo and font? Does Best Buy have any claim? It’s hard to answer that question without looking at the contracts between Best Buy and Volkswagen relative to the development of the custom GEEK SQUAD vehicles and determining what intellectual property licenses are in effect.