IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`|||||ll||lll|||||Illlllllllllllllllll||ll||l||||||
`
`05-254004
`U-S- Pat-M TM°*°’“" Ma" ""°°‘°‘- "22
`
`Opposition No. 91154146
`
`Serial No. 76/351,422
`Mark: GEEK HOUSECALLS and Design
`
`)
`)
`)
`)
`
`) )
`
`)
`)
`
`) )
`
`)
`
`GEEK SQUAD, INC., a wholly—owned
`Subsidiary of BEST BUY CO., INC.,
`
`v.
`
`EHLKE & CO., INC.,
`
`Opposer,
`
`Applicant.
`
`()PPOSER GEEK SQUAD’S MOTION TO SUSPEND PROCEEDINGS
`IN LIGHT OF CIVIL LAWSUIT BETWEEN OPPOSER AND APPLICANT
`
`Opposer Geek Squad, Inc. hereby moves to suspend the above-captioned trademark
`
`opposition proceeding in light of a civil action which may have a bearing on the proceeding.
`
`Today, Geek Squad filed a trademark infringement lawsuit against Applicant Ehlke & Co., Inc.
`
`in the District Court of Massachusetts relating to Eh1ke’s use of the GEEK HOUSECALLS and
`
`Design mark, the outcome of which may have a bearing on the trademark opposition proceeding.
`
`See Complaint, attached as Exhibit A.
`
`In light of this civil action between Opposer and
`
`Applicant, Opposer Geek Squad respectfully requests that
`
`the Board suspend the above-
`
`captioned trademark opposition proceeding until termination of the trademark infringement
`
`lawsuit filed by Opposer Geek Squad against Applicant Ehlke. See 37 C.F.R. § 2.1l7(a).
`
`Word 20092762.!
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`
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`|||||ll||lll|||||Illlllllllllllllllll||ll||l||||||
`
`05-254004
`U-S- Pat-M TM°*°’“" Ma" ""°°‘°‘- "22
`
`Opposition No. 91154146
`
`Serial No. 76/351,422
`Mark: GEEK HOUSECALLS and Design
`
`)
`)
`)
`)
`
`) )
`
`)
`)
`
`) )
`
`)
`
`GEEK SQUAD, INC., a wholly—owned
`Subsidiary of BEST BUY CO., INC.,
`
`v.
`
`EHLKE & CO., INC.,
`
`Opposer,
`
`Applicant.
`
`()PPOSER GEEK SQUAD’S MOTION TO SUSPEND PROCEEDINGS
`IN LIGHT OF CIVIL LAWSUIT BETWEEN OPPOSER AND APPLICANT
`
`Opposer Geek Squad, Inc. hereby moves to suspend the above-captioned trademark
`
`opposition proceeding in light of a civil action which may have a bearing on the proceeding.
`
`Today, Geek Squad filed a trademark infringement lawsuit against Applicant Ehlke & Co., Inc.
`
`in the District Court of Massachusetts relating to Eh1ke’s use of the GEEK HOUSECALLS and
`
`Design mark, the outcome of which may have a bearing on the trademark opposition proceeding.
`
`See Complaint, attached as Exhibit A.
`
`In light of this civil action between Opposer and
`
`Applicant, Opposer Geek Squad respectfully requests that
`
`the Board suspend the above-
`
`captioned trademark opposition proceeding until termination of the trademark infringement
`
`lawsuit filed by Opposer Geek Squad against Applicant Ehlke. See 37 C.F.R. § 2.1l7(a).
`
`Word 20092762.!
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`
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`Dated: May 24, 2004
`
`ROBINS, KAPLAN, MILLER & CIRESI L.L.P.
`
`By M34 012,...
`
`Timothy M. Block
`Misti Nelc
`
`2800 LaSal1e Plaza
`
`800 LaSa11e Avenue
`
`Minneapolis, MN 55402-2015
`(612) 349-8500
`
`ATTORNEYS FOR OPPOSER
`
`GEEK SQUAD, INC.
`
`Word 20092762.!
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`CERTIFICATE OF SERVICE
`
`It is hereby certified that a true copy of the foregoing OPPOSER GEEK SQUAD’S MOTION
`TO SUSPEND PROCEEDINGS IN LIGHT OF CIVIL LAWSUIT BETWEEN OPPOSER
`
`AND APPLICANT has been sent via Federal Express and facsimile transmission to Helen Hill
`Minsker, Banner & Witcoff, Ltd., 1001 G Street NW, Suite 1100, Washington, DC 20001-4597,
`Attorney for Applicant, this 24th day of May, 2004.
`
`l/\/l\Q/la,
`
`Attorney for Opposer
`
`Word 20092762.!
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`
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`
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91 154146
`
`Serial No. 76/351,422
`Mark:
`GEEK HOUSECALLS and
`Design
`
`)
`)
`
`) )
`
`) )
`
`)
`)
`)
`)
`)
`
`GEEK SQUAD, INC., a wholly-owned
`Subsidiary of BEST BUY CO., INC.,
`
`v.
`
`EHLKE & CO., INC.,
`
`Opposer,
`
`Applicant.
`
`CERTIFICATE OF MAILING AND TRANSMISSION
`
`I hereby certify that the attached Opposer Geek Squad’s Motion to Suspend
`
`Proceedings in Light of Civil Lawsuit Between Opposer and Applicant is being sent via
`
`Federal Express and facsimile transmission to: Commissioner for Trademarks, 2900
`
`Crystal Drive, Arlington, VA 22202-3513, fax no. 703—308—9333 on May 24, 2004.
`
`Dated: May 24, 2004
`
`L,
`
`Misti Nelc
`
`Word 20092866.]
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`P.
`32
`61? 859 2728 T0 9115123394181
`MQY 24 2884 17:5? FR RKM&C LLP
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`I
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`IN THE UNITED STATES DISTRICT COURT
`DISTRICT OF MASSACHUSETTS
`
`Civil Action Number:
`
`.
`
`) ) ) ) ) ) ) )
`
`) )
`
`) )
`
`GEEK SQUAD, INC., a wholly-owned
`subsidiary of BEST BUY STORES, L.P.,
`
`Plaintiff,
`
`VI
`
`GEEK HOUSECALLS, INC., formerly
`EHLKE & CO., INC.
`
`Defendant.
`
`
`Plaintiff Geek Squad, Inc. (“Geek Squad"l for its Complaint against defendant Geek
`
`COMPLAINT
`
`I-Iousecalls, Inc. ("Geek Houseealls" or "Defendant"), states and alleges as follows:
`
`PARTIES AND JURISDICTION
`
`1.
`
`Geek Squad, Inc. is a Minnesota corporation, with its principal place of business
`
`I in Minneapolis, Minnesota. Geek Squad, Inc. is a wholly-owned subsidiary of Best Buy Stores,
`
`L.P. Geek Squad is the owner all trademark rights in and to the marks “GEEK SQUAD” and
`
`"WE MAKE HOUSECALLS!" as well as other marks, designs, and images associated with
`
`Geek Squad, including the associated goodwill.
`
`2.
`
`Defendant Geek Housecalls, Inc. is a Massachusetts corporation with its principal
`
`place of business at 401 Lowell Street, Suite 2, Lexington, Massachusetts 02420. Until February
`
`23, 2002, defendant was a Massachusetts corporation that was incorporated under the name
`
`Ehlke & Co., Inc. Upon information and belief, defendant Geek I-Iousecalls does business in this
`
`District and has committed acts of trademark infringement, trademark dilution,
`
`trade dress
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`Word 200922511
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`Exhibit A
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`P.
`B3
`51? B59 2?2E T0 9»16l23394l8l
`MRY Z4 2984 17:5? FR RKM&C LLP
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`I
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`infringement, and other unlawful acts in this District, and is therefore subject to the jurisdiction
`
`of this Court.
`
`3.
`
`This Court has jurisdiction over this Complaint and over this action pursuant to 28
`
`U.S.C. § 1331 in that this action involves questions of federal law and 28 U.S.C. § 1338(a) in
`
`that this action involves claims for trademark infringement, trademark dilution and trade dress
`
`infringement, all under Title 15 of the United States Code.
`
`In addition, the Court has subject
`
`matter jurisdiction over the claims herein pursuant to 28 U.S.C. § 1332 because this is a civil
`
`action between two corporations of difierent states and the amount in controversy is in excess of
`
`$75,000, exclusive of interest and costs.
`
`4.
`
`Venue is proper in this District pursuant to 28 U.S.C. § 139l(c) in that defendant
`
`Geek I-Iousecalls, Inc. is subject to personal jurisdiction in this District.
`
`FACTUAL BACKGROUND
`
`Geek Squad'5 Trademarks and Trade Dress
`
`5.
`
`Geek Squad is a company that is operating with one or more of an affiliated group
`
`of companies operating under the name BEST BUY. The Best Buy affiliated companies own
`
`and operate a well-known and successful chain of consumer electronics and household goods
`
`stores throughout the United States. That chain of stores is widely known and recognized by the
`name “BEST BUY." The Best Buy stores sell a variety of consumer electronics and household
`
`products, and each provides an array of services to its customers. Geek Squad was purchased by
`
`these companies on October 14, 2002.
`
`6.
`
`Prior to that acquisition, Geek Squad has engaged in, and is now engaged in
`
`providing services including computer installation and repair, design of computers, computer
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`Word 20092253.l
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`I
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`software and computer networks. Geek Squad has been engaged in these servicesisince at least
`
`1994.
`
`7.
`
`Geek Squad is
`
`the owner of certain United States Federal Trademark
`
`Registrations for the mark GEEK SQUAD, including the following:
`
`U.S. Reg. No. 1,943,643: GEEK. SQUAD (+ design), issued December 26, 1995
`
`us. Reg. No. 2,023,380: GEEK SQUAD (+ design), issued December 17, 1995
`
`U.S. Reg. No. 2,744,658: GEEK SQUAD, issued July 29, 2003
`
`I
`
`True and correct copies of the Geek Squad marks are attached to this Complaint as Exhibit A.
`
`These registrations are valid, subsisting and uncancelled.
`I
`8.
`Geek Squad has continuously used GEEK SQUAD as its tradernark for its
`
`computer services since at least 1994, and is well known to consumers of services in the areas of
`
`design, installation and repair of computers, computer software and computer networks and to
`
`others. The Geek Squad marks are each distinctive, and each quickly generates a strong
`
`following and recognition among consumers.
`
`9.
`
`Geek Squad has used and is now using the tradcmarldservice
`
`WE MAKE
`
`HOUSECALLSI. The Geek Squad mark WE MAKE I-IOUSECALLS! has been infextensive use
`
`since at least June, 1999. There is also a substantial likelihood that Geek Squad
`
`been using
`
`the mark WE MAKE HOUSECALLSE since 1997.
`
`Geek Squad's mark “WE MAKE
`
`HOUSECALLS! is well known to consumers of services in the areas of design, installation and
`
`repair of computers, computer software and computer networks and others. On November 27,
`
`2002, Geek Squad filed U.S. Trademark Application No. 7811 89,720 directed to the mark WE
`
`MAKE HOUSECALLS! in International Classes 037 and 042.
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`10.
`
`These registered trademarks and other marks are referred to collectively in this
`
`Complaint as “the Geek Squad marks."
`
`11.
`
`Through experience, care, and skill, Geek Squad has become widely known and
`
`has acquired a reputation for excellence, outstanding customer service, and quality products.
`
`Geek Squad has consistently and continuously invested significant
`
`resources
`
`into the
`
`development of its reputation as a high quality, consumer—oriented computer support service
`
`provider. Geek Squad's well deserved reputation, goodwill, and name recognition are and have
`
`been derived from its commitment to quality, customer service, and customer satisfaction. As
`
`such, Geek Squad‘s reputation, goodwill, and trademarks are valuable assets to Geek Squad, and
`
`Geek Squad maintains those assets through consistent and continuous delivery of the products
`
`and services sought by consumers or purchasers of the types of products and services Geek
`
`Squad offers under the Geek Squad family of trademarks.
`
`1.7..
`As a result of Geek Squad's long use and promotion of the Geek Squad marks in
`connection with design, installation and repair of computers, computer software and computer
`
`networks and others, the Geek Squad marks have become distinctive and serve to identify Geek
`
`Squad's high quality services, to distinguish Geek Squad‘s services from those offered or sold by
`
`others, and to distinguish the source or origin of Geek Squad's services. The relevant consuming
`
`public widely recognizes and associates the Geek Squad marks with Geek Squad and its services.
`
`13.
`
`The Geek Squad marks are famous.
`
`The Defendant's Activities
`
`14.
`
`Upon information and belief, defendant Geek Housecalls, Inc. operated under the
`
`name Ehike & Co., Inc. beginning in 1999. Long after the adoption and widespread use of the
`
`Geek Squad marks, defendant began a computer service company that provided services related
`
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`to the design, installation and repair of computers, computer software and computer networks, as
`
`well as other services. Defendant never used the mark GEEK HOUSECALLS until July 9,
`
`2001.
`
`In February 2002, defendant changed its Articles of Incorporation to rename itself as
`
`Geek Housecalls, Inc.
`
`15.
`
`Geek Squad is informed and believes that the use of the Geek Squad marks, or
`
`marks substantially similar to the Geek Squad marks, by the defendant is deliberate, and that
`
`defendant has used and continues to use these marks for the purpose of giving the defendant’s
`products and services appeal, credibility and salability.
`
`16.
`
`The unauthorized use of the Geek Squad marks, or marks substantially similar to
`
`the Geek Squad marks, falsely indicates to the relevant purchasing public that defendant's
`
`services are affiliated, connected, or associated with Geek Squad, or are sponsored, endorsed, or
`
`approved by Geek Squad, or are in some manner related to Geek Squad andlor its products or
`
`services.
`
`17.
`
`The unauthorized use of the Geek Squad marks, or marks substantially similar to
`
`the Geek Squad marks, by the defendant in the manner described above will enable it to trade on
`
`and receive the benefit of the goodwill in the Geek Squad marks. which Geek Squad has built up
`
`at great labor and expense over many years.
`
`13.
`
`The unauthorized use of the Geek Squad marks, or marks substantially similar to
`
`the Geek Squad marks, in the manner described above causes and will cause dilution of the
`
`distinctive quality of the Geek Squad marks.
`
`19.
`
`The unauthorized use of the Geek Squad marks, or marks substantially similar to
`
`the Geek Squad marks, in the manner described above began after the Geek Squad marks had
`
`commenced and become distinctive and famous.
`
`vmmzmmunt
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`2?
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`20.
`
`The unauthorized use of the Geek Squad marks, or marks substantially similar to
`
`the Geek Squad marks, in the manner described above removes from Geek Squad the ability to
`
`control the nature and quality of the services provided under the Geek Squad marks, and places
`
`Geek Squad's reputation and goodwill at least in part in the hands of the defendant, over whom
`
`Geek Squad has no control.
`
`21.
`
`Defendant‘s activities as outlined above can cause irreparable injury to Geek
`
`Squad, and unless restrained by this Court, will cause irreparable injury to Geek Squad and to the
`
`public. There is no adequate remedy at law for this injury.
`
`COUNT I
`
`INFRINGEMENT OF REGISTERED MARK, 15 U.S.C. § 1114
`
`22.
`
`Geek Squad restates and realleges the allegations of paragraphs 1 through 21 of
`
`this Complaint as if fully set forth herein-
`
`23.
`
`Geek Squad is the owner of the Geek Squad marks, all of which are used on or in
`
`connection with design, installation and repair of computers, computer sofiware and computer
`
`networks.
`
`24.
`
`Defendant is infringing upon Geek Squad’s registered trademarks, including one
`
`or more of the following:
`
`U.S. Reg. No. 1,943,643: GEEK SQUAD (+ design), issued December 26, 1995
`
`U.S. Reg. No. 2,023,380: GEEK SQUAD (+ design), issued December 17, 1996
`
`U.S. Reg. No. 2,744,658: GEEK SQUAD, issued July 29, 2003
`
`25.
`
`Defendanfs use of any one of these trademarks without Geek Squad’s
`
`permission, consent, or
`
`acquiescence is infringement, is deceptive, and is likely to confuse,
`
`deceive, or cause mistake.
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`Word 200922511
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`13.88
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`26.
`
`Upon information and belief, defendants acts described above constitute
`
`infringement that is willful, wanton, and with notice of Geek Squad‘ s trademark rights.
`
`27.
`
`28.
`
`This is an exceptional case pursuant to 15 U.S.C. § 1117.
`
`Geek Squad has suffered injury in an amount to be determined at trial.
`
`COUNT II
`
`COMMON LAW TRADEMARK INFRINGEMENT
`
`29.
`
`Geek Squad restates and realleges the allegations of paragraphs 1 through 21 of
`
`this Complaint as if fully set forth herein.
`
`30.
`
`Geek Squad is the owner of the Geek Squad marks, all of which are used on or in
`
`connection with design, installation and repair of computers, computer software and computer
`
`networks.
`
`31.
`
`Defendant is infringing upon Geek Squad’s registered trademarks,
`
`including
`
`GEEK SQUAD and WE MAKE HOUSECALLSL
`
`32.
`
`Defendanfs use of any one of these trademarks without Geek Squad’s
`
`permission, consent, or
`
`acquiescence is infringement, is deceptive, and is likely to confuse,
`
`deceive, or cause mistake.
`
`33.
`
`Upon information and belief, defendant's acts described above constitute
`
`infringement that is willful, wanton, and with notice of Geek Squad’s trademark rights.
`
`34.
`
`Geek Squad has suffered injury in an amount to be determined at trial.
`
`Word 20091253.l
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`t
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`COUNT III
`
`TRADEMARK DILUTION, 15 U.S.C. § l12S(c)
`
`35.
`
`Geek Squad restates and realleges the allegations of paragraphs 1 through 21 of
`
`this Complaint as if fully set forth herein.
`
`36.
`
`Defendant's use in commerce of the Geek Squad marks in connection with its
`
`similar service company and in connection with defendant's for—profit activities causes dilution
`
`of the distinctive quality of one or more of the Geek Squad marks, in violation of the Federal
`
`Trademark Dilution Act. 15 U.S.C § 1125(c).
`
`37.
`
`Geek Squad has suffered injury in an amount to be determined at trial.
`
`COIJNT IV
`
`TRADE DRESS INFRINGEMENT. 15 U.S.C. § 1125(a)
`
`38.
`
`Geek Squad restates and realleges the allegations of paragraphs 1 through 21 of
`
`this Complaint as if fully set forth herein.
`
`39.
`
`The Geek Squad advertisements,
`
`lettering and website design are inherently
`
`distinctive and have acquired distinctiveness by its customers as a Geek Squad sponsored entity.
`
`40.
`
`The identifying features of the advertisements, lettering and website design are
`
`primarily nonfunctional.
`
`41.
`
`Due to the sirriilarities between the designs of Geek Squad advertisements,
`
`lettering and website design, there is a likelihood of confiision in consumers‘ minds as to the
`
`source of sponsorship of the sites.
`
`42.
`
`In addition, the combination of the two Geek Squad marks, GEEK SQUAD and
`
`WE MAKE HOUSECALLS! into the defendant's use of the phrase “Geek Housecalls” creates a
`
`likelihood ofconfusion in consumers‘ minds as to the source of sponsorship of the cohipariies.
`
`Word 20-092253.]
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`43-
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`Defendant's use in commerce of these marks
`
`and substantially similar
`
`advertisements, lettering and website design in connection with its business infringes on Best
`
`Buy‘s trade dress, in violation of the Federal Trademark Dilution Act, 15 U.S.C. § 1l25(a).
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Geek Squad Inc. prays that:
`
`a.
`
`Defendant and any agents. servants, employees, or all other persons in active
`
`concert or participation with the defendant, be permanently enjoined and restrained from using in
`
`connection with any campaign Geek Squad’s marks and any other mark that is confusingly
`
`similar to Geek Squad’ s marks, which is likely to dilute the distinctive quality thereof;
`
`b.
`Defendant be ordered to file with the Court and serve upon Geek Squad within
`thirty (30) days after the entry and service upon defendant of an injunction, a report in writing
`
`and under oath setting forth in detail the manner and form in which the defendant has undertaken
`
`to comply and is complying with the Court’s injunction;
`
`c.
`
`d.
`
`Geek Squad recover all damages sustained;
`
`Geek Squad recover all profits obtained by defendant in connection with the use
`
`of the Geek Squad marks;
`
`e.
`
`1'.
`
`Geek Squad recover its reasonable attorneys’ fees;
`
`Geek Squad recover the cost of this action, along with pre-judgment and post-
`
`judgment interest; and
`
`g.
`
`Geek Squad recover such other relief as the Court may deem appropriate in the
`
`circumstances.
`
`Word 200922531
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`1,‘.
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`Dated: May 24, 2004.
`
`
`
`Boston, MA 0219
`(617) 267-2300
`
`ATTORNEYS FOR GEEK SQUAD, INC.
`
`Of Counsel:
`
`ROBINS, KAPLAN, NHLLER & CIRESI L.L.P.
`
`Timothy M. Block (MN Bar # 317950)
`2800 Lasalle Plaza
`800 LaSa11e Avenue
`
`Minneapolis, MN 55402
`Tel:
`(612) 349-8500
`Fax:
`(612) 339-4181
`
`Word 200922511
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`** TOTRL PRGE.ll mm
`
`
`
`wwwmkmcxom
`
`P
`
`2800 LASALLE PLAZA
`800 LASALLE AVENUE
`
`ROBINS. KAPLAN, MILLER & CIRESI up
`
`TEL:6l2-349-3500 FAX:612-339-4131
`
`MIST! NELC
`(512) 349-3729
`
`May 24, 2004
`
`IllllllllllllllllllllllllllllllllllllIllllllllllll
`
`05-25-2004
`
`u.s. panama. TMOfcITM Mail asp: DL #22
`
`VIA FEDERAL EXPRESS
`
`& FAX NO. 703-308-9333
`
`Box TTAB No Fee
`
`Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`Re:
`
`Geek Squad v. Ehlke
`Opposition No. 91154146
`Trademark Application, Serial No. 76/351,422
`Our File No. 01 l082.1702
`
`Dear Sir/Madam:
`
`Enclosed for filing please find the original and two copies of Opposer Geek Squad’s Motion
`to Suspend Proceedings in Light of Civil Lawsuit Between Opposer and Applicant.
`
`Please direct all communications to the undersigned writer at Robins, Kaplan, Miller &
`Ciresi L.L.P., 2800 LaSalle Plaza, 800 LaSalle Avenue, Minneapolis, MN 55402-2015, telephone
`
`number (612) 349-8729.
`
`Very truly yours,
`
`ROBINS, KAPLAN, MILLER & CIRESI L.L.P.
`
`Whig/#
`
`Misti Nelc
`
`MN/lmz
`
`cc:
`
`Helen Hill Minsker, Esq. (w/ enclosures)
`
`20092763. I
`
`ATLANT.\‘BOSTDN'-1.05ANGELES MINNEAPOLIS NAPLES-SAINTF.\UL'WASl-l[N(}TON.D.C.
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