Geoffrey, Inc
I was looking the list of trade mark registry decisions last week and I noticed that Geoffrey, Inc., have been having a run of bad luck looking after their trade marks. You might well ask yourself, who is Geoffrey, Inc.? Well, its the company behind "Toys R Us" and they have a company history page if you want to learn more.
As you have probably noticed, this is one of those brands that has caused lots of people to jump on the "R Us" bandwagon. Geoffrey, Inc., regularly tries to stop others getting marks registered that contain "R Us" as part of the brand.
Anyway, as I said, it's been unsuccessful in 3 cases over the last couple of months. I thought that there were a few useful things to conclude about these cases. However, first the facts.
The "Official" "R Us" family of marks
Geoffrey, Inc., has several trade marks around the "R Us" theme, including:
- A very wide EU registration for "R Us"
- A very wide EU registration for "Toys R Us"
- Some UK registrations for "Babies R Us"
- A UK registration for "Snacks R Us"
The Contenders
The three successful contenders over the last couple of months are listed below. I've included links to both the trade marks themselves and the hearing officers' decisions (you'll need Acrobat) to view the decisions).
- Windows R Us application details and Windows R Us decision details - this was Geoffrey trying to get a registration declared invalid;
- HotelsRUs application details and HotelsRUs decision details - this was Geoffrey trying to stop a trade mark application getting to registration;
- Small Claims R Us application details and Small Claims R Us decision details - this was Geoffrey trying to stop a trade mark application getting to registration.
Things to note about these applications:
- The names all say what they do - "Windows R Us" is for double glazing; "Hotels R Us" is for accommodation booking services; and "small claims r us" is for legal services and in particular small claims cases;
- Geoffrey, Inc., tried to "stop" each one and failed. In the Windows R Us case the owner of the trade mark application didn't even respond to Geoffrey's application but the hearing officer decided against Geoffrey anyway;
- The hearing offices making the decisions just don't think the average consumer will be confused into thinking these businesses have any connection with Geoffrey;
- Where the other party put up a fight, Geoffrey has to pay a contribution to the their legal costs.
(As a little aside, Geoffrey's trade mark agents, David Keltie Associates, instructed a barrister, Michael Edenborough to represent Geoffrey at the hearings. We use Michael ourselves and like him and the decisions are a reflection of the law not him!).
A quick look at the UK trade mark register shows other third party registrations (including "Printfix R Us Ltd" and "Mats R Us"). A quick search on Yell shows loads including "drains R us", "cards r us", "repairs r us" and "carpets r us".
Comments
We are constantly advising clients about the problems that using a descriptive trade mark can bring. The "R Us" concept works when preceded by a product or service category and this is the problem for Geoffrey - the range of things that you could follow by "R us" is so wide that they could never really stop everyone. Despite their efforts at tackling trade marks, from my point of view it looks like they've lost the battle to control "r us".
But what about everyone that jumped on the "r us" bandwagon. Even for the few companies that have managed to secure some trade mark registrations, what strengths have they really got? For marks that are highly descriptive, it seems to me that "windows r us" might be really annoyed to see a competitor use "uPVC R us" or "glazing r us" but they are not going to be able to do anything about it.
The best advice I can give to anyone looking at brands is simple (see my top tips post on the subject):
- Pick a brand that says nothing about what you are doing;
- The most distinctive and unique the brand the better.
Registration of such a brand is easier and others can't accidentally get close to your brand.
Comments