Is NETBOOK a Trademark, or Can Anyone Use the Term for Small, Inexpensive Computers?
By: CARRIE L. ROSENBERRY
March 2009
Do you own a “netbook”? Have you shopped for one or seen one advertised in the last year? Many computer manufacturers, including Dell, Hewlett-Packard, Lenovo, Sony, and Samsung, make products known by some as “netbooks,” which are generally small, inexpensive laptop computers that typically costs less than $500.
A Canadian company, however, believes it alone has the right to use the term NETBOOK for computers.
In late 2008, Psion Teklogix, Inc. sent letters to various computer manufacturers and retailers asking them to stop using the term NETBOOK. Why? Because Psion holds a U.S. trademark registration for the term in connection with laptop computers, claiming its use of the term began as early as 1999.
While it is not currently selling NETBOOK brand laptops, Psion is selling NETBOOK accessories and repair parts. Through its recent campaign, Psion is trying to persuade the retail community to adopt a different term for these small and inexpensive laptops. As part of its campaign, Psion has successfully stopped others from purchasing the keyword “netbook” for advertisement through Google’s Adwords program.
Psion’s attempts to enforce its trademark rights, however, have not gone unchallenged.
For instance, Dell responded to a Psion cease and desist letter by filing a petition to cancel Psion’s NETBOOK U.S. trademark registration in an administrative action at the United States Patent and Trademark Office.
Intel, which operates the website netbook.com, went a step further. It filed a complaint in federal court seeking cancellation of the trademark registration. Intel asserts that Psion failed to exercise its trademark rights in the U.S. soon enough, that the mark NETBOOK has become devoid of any trademark meaning, and the term is now simply a generic term for notebook computers that are small, inexpensive, and ideal for connecting to the Internet or “Net.”
An Australian company, Online Solutions Pty Ltd, has launched a “Save the Netbooks” campaign “to protect the next generation of personal computers from the impending threat of trademark action.” This group previously succeeded in challenging Dell’s U.S. trademark application for “cloud computing” by also asserting that the term was a generic term in the computer world.
Psion is at risk of losing its NETBOOK trademark because many people, primarily those in the tech industry, are using the term generically to describe a class of notebook computers. Now judges have to decide whether the relevant public understands the term to generically refer to small and inexpensive computers or if NETBOOK operates to identify a single brand of computer.
A trademark that was once a strong mark can lose its trademark meaning and become a generic term for the product. When this happens, the owner of the trademark loses all rights in the mark, and the public is free to use the term. Past examples of trademarks that have become generic include “yo-yo,” “linoleum,” “cellophane,” “escalator,” “zipper” – even “aspirin” (and “heroin!”).
To avoid “genericide,” a trademark owner should be sure to properly use its trademark. A trademark is your special version of a product, so don’t use a trademark as a noun or a verb, but rather use it as an adjective modifying the generic name of the product. Also use a distinctive type for your trademark such as all capitals, bold, or italics and don’t forget the ®, TM, or SM notice. Let the world know you are claiming rights in your trademark.
Some companies, faced with the prospect of the loss of a trademark because of misuse, even mount expensive campaigns to try to save their mark. See So You Think It Doesn’t Matter How Your Trademark Is Used? Xerox Corporation Would Say You’re Wrong! You can avoid having to do that if you use your trademarks properly.
What ultimately will happen to the NETBOOK trademark is not yet known. Regardless of the outcome, take Psion’s story as a cautionary tale and act promptly if others misuse your trademark. And be sure you take care to set a good example by using your own mark properly.