Dell Accuses Psion of "Fraud" Over Netbook 167
Barence writes "Dell has issued court papers in the US, accusing Psion of fraudulently laying claim to the term netbook. Psion sent out warning letters late last year to PC manufacturers, retailers and bloggers alike, asking them to stop using the term netbook, which the company registered as a trademark in the late 1990s. But in a Petition for Cancellation of Psion's trademark, the PC manufacturer accuses Psion of abandoning the term and fraudulently claiming it was still in use. 'Psion is not currently offering laptop computers under the Netbook trademark,' Dell's petition claims. The petition also claims that Psion made false statements about its use of the term Netbook in a sworn declaration to the US Trademark Office."
Hooray for trademark law! (Score:5, Informative)
However, if they were using the mark, or intending to use the mark in a good faith effort, Dell can lose and open themselves to paying Psion's legal fees as well as a counter suit, cessation of use in commerce, and a healthy share of any profits used under that term. (i.e. i can defend a trademark on a device i'm designing even if i haven't sold a single unit).
One final thing, IANAL, but I talk to them when I'm feeling masochistic.
Miniature timeline (Score:5, Informative)
1991 - Trademark abandoned by Asymetrix
1996 - Psion applies to the USPTO for the trademark for netbook
1999 - First reference I can find to a Psion netbook [geek.com]
2003 - Netbook Pro is released (doesn't seem to be for sale anymore, it was a 'clamshell PDA')
2008 - Claimed genericization of the term netbook by Asus and others.
December 2008 - Psion sends cease and desist letters to a bunch of companies
Now - Dell retaliates, files court papers claiming that Psion is not planning on producing a product called a netbook (which is probably true, it's not really their target market, but they seem to like expanding so who knows).
The fact that the term in and of itself is generic may not be enough, after all we have apple computer, and apples are pretty common. It does look like it could be an expensive fight, and I would be surprised if Psion decides to fight it out to the end. IANAL
What are you talking about? (Score:5, Informative)
FYI, it's generally accepted there are five different categories of trademark, each more defensible than the next. The least most defensible mark is a "descriptive" mark. Like "facial tissue." Had the Kleenex brand chosen "Facial Tissue[tm]" for their mark, they may well have lost control of the mark because generic terms cannot function as trademarks.
We all call them Kleenex, but they are facial tissues. If someone had tried to trademark 'facial tissue' we would be in the same ballpark here.
The most defensible mark is a fanciful one, that is a word which does not otherwise exist (Kodak, Xerox, Pepsi, etc). Afaik, Kleenex actually is the best possible name one could choose to associate with tissues, since it is entirely fanciful (and Kleenex company has done a good job associating their name with tissues). As an aside, it is possible for a diluted mark to lose its protected status (such as with Bayer's "Aspirin" analgesic).
These marketing people might as well start trying to trademark things like 'desk' 'pen' or 'screen'.
Netbook would probably fall under the "Suggestive" trademark category (the third most defensible category, behind Arbitrary and Fanciful). Net and Book both exist as words, but were previously not widely applied to this sort of device.
So, in conclusion, "Netbook" is nothing like "pen" or "desk," as far as trademarks go. Neither of these examples would even be registerable, unless they were referring to something they weren't (you could make a ketchup product called "DESK" or a cell phone called "PEN").
Re:Miniature timeline (Score:3, Informative)
A more famous example would be "Apple Computer" and "Apple Records," which I don't think anyone got confused, but Apple Records had their day in court anyway.
The point is, it would be unfair for a big company to try to steal a trademark from a small company by using it everywhere in advertising, then once all the people associate it with a certain object, to claim it has become generic. It may truly have become generic, but it wouldn't have if the larger company hadn't stolen the name........
And personally, I don't really care. I am just as happy to call it a small underpowered laptop or whatever the term becomes. That's probably an unpopular opinion, but there are really many more important things in the world, like the difference between a hacker and a cracker for example. I like the word hacker, and it got distorted by the public. These things happen, and you have to adjust.
Re:What are you talking about? (Score:0, Informative)
As an aside, it is possible for a diluted mark to lose its protected status (such as with Bayer's "Aspirin" analgesic).
Bayer lost Aspirin because the Germans lost WWII.
Not because they allowed dilution.
Re:Hooray for trademark law! (Score:4, Informative)
Not quite correct. You can apply for the mark if you have a bona fide intent to use, but it won't issue until you use it, and once the mark is registered, you must continue to use it in all of the goods and services listed. If you file a statement of use to renew your registration, and there is even one good or service in the list for which you are not actually using the mark, your statement of use is fraudulent, and the whole mark is subject to being canceled.
The "fraud" allegation is actually not that big a deal. It's very common to assert that in a cancellation because that's one of the ways you get the mark canceled. Also, remember that a cancellation is not a federal court proceeding. It's an administrative proceeding in the USPTO. They just cancel the mark. It's not a damages proceeding.
IAAL, but I'm not your lawyer and I don't represent you yadda yadda.
Re:genericization (Score:4, Informative)
tell that to the owners of Kleenex, xerox, and Q-tip, and coke, and they'll laugh you all the way to the courtroom.
Re:What are you talking about? (Score:3, Informative)
I thought Bayer lost its trademark to Aspirin as part of World War I reparations.
TARR links persist (Score:5, Informative)
Source, if the link evaporates, search TESS for Netbook, its serial number 75215401
PROTIP: TESS links expire, but each TESS result has a persistent link under the "TARR Status" button. See TARR: Serial #75215401 [uspto.gov]
Re:What are you talking about? (Score:5, Informative)
That's a bad example. The US trademark on aspirin was given up as part of Treaty of Versailles [wikipedia.org] at the end of World War I. It was never diluted in the US and remains a trademark in other parts of the world.
it was actually diluted in the U.S., in addition (Score:3, Informative)
After World War I, the Bayer trademarks in the U.S. were reincarnated in a new company, confusingly also called Bayer, owned by the American firm Sterling Drug. They attempted to enforce the trademarks, but a 1921 court ruling invalidated [harvard.edu] the "aspirin" mark on grounds that it had come to be used as a generic term for the class of drugs for too long to be recaptured.
Re:Hooray for trademark law! (Score:3, Informative)
Whoa, slow down sparky. Fraud in a cancellation proceeding could mean something as simple as the trademark registration lists "sale of ice cream, ice cream novelties, milkshakes, malts, frozen yogurt, frozen yogurt-based drinks, and smoothies," but when you renewed your registration, you no longer had malts on your menu. Sure, you still screwed up, but I don't think you deserve to go to Club Fed.
Also, our "corporate masters" (i.e., companies with lots of money) account for only a fraction of trademark registrants. There are millions of registered marks, and most are owned by little mom & pop shops. And guess which ones are most likely to have "fraud" in their statements of use? Not the big guys. Their armies of lawyers make sure that doesn't happen, because their marks are really, really valuable. They're not going to risk their marks over silly stuff like this.
Re:Psion built and trademarked the 1st Netbook (Score:2, Informative)
Yes, I found reviews of the Netbook Pro 4 years old, and even Ars Technica's Jon Stokes was talking about them *as new products* in September 2005.
The only claim that any of these people have is that it is a generic term, and to be honest it isn't (most people won't know what one is), and there's plenty of time to stop it being generic if companies that currently use 'netbook' desist from using that term. The fact that some companies used "mininote", etc, shows that they were aware of the trademarked term, or that 'netbook' wasn't a common term even a year ago.
Re:Psion built and trademarked the 1st Netbook (Score:3, Informative)
I actually had a Psion Netbook at work. There was only one thing "Netbook" meant at that time and that was it. The smallest laptops at the time were called notebooks. There was no generic "netbook".