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What not to do if your trade mark is becoming generic

What not to do if your trade mark is becoming generic

February 11, 2009
A mini-laptop or a netbook?

IP lawyers always become excited when they find an example of a trade mark in danger of becoming generic.  The case in point is the trade mark for NETBOOK, pointed out in this blog post.  NETBOOK was registered as a trade mark in the US and in the EU by Psion in 1996 for computers. Oddly enough, until last year the company seemed to do very little to enforce their mark. Psion has now changed their strategy and is now alerting the industry to their trade mark through a series of letters.  Google is also now blocking any keyword advertisements with the word NETBOOK in the text.  The letters are not reportedly aimed at competitors but instead at bloggers and journalists and in the letters they are asking that people stop using NETBOOK as a generic term and begin using a different term.

Psion originally manufactured the netBOOK computer which was discontinued in 2003. They had filed for a US Trademark in 1996 and it was finally granted in 2000.  In October 2003 Psion released an updated model called NETBOOK PRO.

If this does come to trial Psion could be a facing an uphill battle in trying to save the mark.  Doing a quick search on Google shows that the term is used often as a generic term to describe a type of lap top computer. The Wikipedia entry on Netbook states that “netbooks are a class of laptop computers that are small, light, and inexpensive.” Other sources also consider the term a generic description of mini-laptops including some dictionaries and Zdnet.  If Psion does launch proceedings against someone this type of evidence would be extremely useful to their opponent who could use it to try to prove that the public no longer associates NETBOOK with their brand.   Several bloggers have also mentioned that there has been generic usage of the term since 1989.  The computer giant, Intel has even begun using the term Netbook saying that they could see no conflict with the Psion mark and they are not using the term in a branded sense.

What is going to hurt their case even more is that it would appear that they are no longer manufacturing laptops like this. The worst evidence for Psion can be found on their own website where they admit that they ended the product line in 2003 and now only produce accessories for computers of this nature.  In most countries if you do not use a trade mark for a certain number of years than it can be revoked so this could be another ground on which to try to revoke their trade mark.

Psion has kept their mark in the US so far after several other companies have attempted to register trademarks with NETBOOK as a component.  The USPTO has rejected G NETBOOK, WIND NETBOOK and COBY NETWORK. These rejections have only been in the last few months so it is not clear yet if the applicants will be able to overcome the rejection by arguing that the mark is now generic.

Although Psion is now taking steps it may be too late to save their marks. The best thing for them would have been to start this campaign years ago. Sending letters is only one step (probably not the best one either) in trying to hold onto their mark. They will also have the essential and formidable task of educating consumers of laptop computers that NETBOOK is for their laptop computers and theirs alone.