Trademark Musings

Thoughts on trademark issues by Laura Winston

Best Buy’s Attempted Generisuicide

First of all, I hate to make light of suicide.  Maybe I should call it “taking one’s mark’s own life”.

Let’s face it: BEST BUY is not the strongest trademark under the sun; in fact, I’d say that it was descriptive until it became synonymous with the now-ubiquitous electronics/appliances/music/movies/cell phone big box chain.   So I was surprised to see a TV commercial in which an actor portraying a satisfied customer said, “I’m a Best Buyer for life.”

We trademark attorneys work hard to convince clients to use their trademarks only as adjectives followed by the generic business category or product, e.g.  KLEENEX tissue.  It can be hard enough to keep consumers from doing this.  Johnson & Johnson, for example, struggles with it all the time – they even had to change their catchy “I am stuck on Band-Aid ‘cuz Band-Aid’s stuck on me” jingle to insert the word “brand” after Band-Aid, greatly interrupting the easy flow of the jingle. 

Some background research shows that the first few registrations for BEST BUY, starting in 1991, included the tag design and contained a disclaimer of the exclusive right to use the words BEST BUY, essentially an admission that the words were descriptive and not protectable as a mark.  Finally in 2008, the owner of the Best Buy chain secured a registration for BEST BUY after submitting about 50 pages of evidence that the mark BEST BUY was not generic and that it had acquired distinctiveness as a trademark for the retail chain.

After all that work (and lawyers’ fees to prepare the extensive declarations and evidence), it is strange that Best Buy would attempt generisuicide and risk undoing all its efforts to protect the brand that represents the category killer in the brick-and-mortar electronics retail sphere.

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December 10, 2009 - Posted by | Uncategorized | , , ,

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