Best Buy, Resurrected From the Trademark Graveyard?

As a trademark type, something struck me as odd about the Best Buy logo image appearing on the brand new outdoor baseball scoreboard at Target Field, during the Minnesota Twins recent home opener against the Boston Red Sox, so I captured a photograph to discuss it here on DuetsBlog.

What caught my eye was the curious placement of the ® federal registration symbol. Its positioning adjacent to the words "Best Buy" appeared to convey that the words "Best Buy" must be distinctive and federally registered, separate and apart from the hang tag logo, and I knew better, or at least, I thought I did, as I’ll explain.

After all, I knew a few things for sure, things that should counsel against placing the ® registration symbol next to the words "Best Buy":

1. Use of the federal ® registration symbol adjacent to matter not federally registered is a misuse of the federal registration notice which may result in serious repercussions such as false advertising liability, and/or a finding of "unclean hands," if there is an intent to deceive people into believing unregistered matter is, in fact, registered as a trademark; 
2. Some twenty years ago in Best Buy Warehouse v. Best Buy Co., Inc., 751 F.Supp. 824 (W.D. Mo. 1989), "Best Buy" was buried in the trademark graveyard, when then Chief Judge Scott O. Wright held "that ‘best buy’ is a generic term not capable of receiving trademark protection";
3. A generic term is the antithesis of a trademark. It can never function as a trademark to identify and distinguish the products or services of only one seller;
4. Generic terms and trademarks are mutually exclusive concepts under the law. Generic terms are not subject to appropriation and they are ineligible for registration or protection;
5. Generic terms are part of the "public domain" or "linguistic commons," they cannot be owned and they are free for all to use without risk of infringement or dilution liability;
6. Best Buy actually asked for it, so to speak, because the genericness ruling was sought by Best Buy to short-circuit a trademark infringement case brought against Best Buy for its use of "Best Buy Co." and "Best Buy Superstore" in Kansas City, Missouri, by an earlier retailer of office furniture also operating in Kansas City, under the names "Best Buy Warehouse," "Best Buy Office Furniture," and "Best Buy Office Warehouse"; 
7. In support of its successful genericness defense, among other evidence showing that "best buy" is nothing more than sales "puffing" in the area of retail sales, Best Buy had engaged an expert witness who testified that the term "best buy" is generic when used in association with the sale of goods to the general public;
8. Best Buy’s silver-bullet style genericness defense resulted in the grant of summary judgment on all counts of Best Buy Warehouse’s complaint, including trademark infringement, false designation of origin, unfair competition, trademark dilution, and trademark disparagement;
9. Former Chief Judge Scott O. Wright’s decision, finding "Best Buy" generic as a matter of law, and not the subject of trademark protection, was affirmed by the Eight Circuit Court of Appeals, and then the U.S. Supreme Court declined to hear any further appeal, so the genericness ruling became a final judgment; and 
10. Each of these federal registrations containing "Best Buy" had expressly disclaimed exclusive rights in the words "Best Buy":

As it turns out, however, what I didn’t know or appreciate is that Best Buy has been quietly working behind the scenes to undo the normally permanent implications of the genericness ruling by affirmatively seeking federal registration. I also didn’t know or appreciate until now that Best Buy convinced a Trademark Examining Attorney at the U.S. Patent and Trademark Office to approve for publication "BEST BUY," just the words, in standard character, without any design or style limitations. And, since no one opposed, a federal registration for BEST BUY issued about two years ago. As such, at least for the time being, there is no misuse of the registration notice symbol appearing in close proximity to the words BEST BUY. 

This may very well be the first time in American trademark history, where a party has avoided trademark infringement liability by winning its genericness defense and then later obtained a federal trademark registration for the very words it had previously convinced a federal district judge were generic and incapable of any protection.

Apparently recognizing the gravity of the change in position, Best Buy’s 2007 trademark registration application was not the garden variety type, but instead, it included a variety of atypical materials, including testimony from Best Buy’s Senior Vice President, Marketing Communications and Business Operations, testimony from a survey expert, and perhaps most significantly, a thirty-one page legal brief detailing and arguing Best Buy’s current position on the subject, including these highlights:

• BEST BUY is not generic;
• BEST BUY is descriptive;
• BEST BUY has acquired distinctiveness;
• Judicial estoppel should not be applied;
• Best Buy’s different positions are not clearly inconsistent;
• Collateral estoppel should not be applied;
• The de facto secondary meaning doctrine should not prevent registration; and
• Even if once generic, the Singer doctrine permits protection of BEST BUY as a trademark.

Needless to say, Best Buy’s submission makes very interesting reading, and next week, I’ll explore it in more detail. In the meantime, I wonder what Best Buy Office Furniture thinks about it?

More importantly, what do you think? 

Should the BEST BUY registration survive litigation scrutiny?

Should it matter who might challenge the registration down the road?