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Dell Goes 'Nuclear' Over Netbook Trademark

Dell is attacking mobile device maker Psion Teklogix in an attempt to wipe out its patent on the term 'netbook.'

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Psion Teklogix, based in Mississauga, Ontario, first filed for a trademark on the term netbook in 1996 and began using it in 1999, and amended it in September of 2000.

In November of 2006, Psion Teklogix renewed the trademark with the U.S. Trademark Office, according to documents from the USPTO.

Dana C. Jewell and Anna Kuhn, the attorneys who filed the petition for cancellation for the Round Rock, Texas-based Dell, allege that Psion Teklogix should lose the trademark because the company abandoned it, committed fraud and that the term has become generic.

The first two claims filed by Dell with the USPTO are closely linked. In order to keep a trademark active a company must re-register it with the USPTO every five years and show that they are, in fact, actively using the trademark.

In its petition for cancellation, the Texas computer manufacturer believes that Psion Teklogix "is not currently offering laptop computers under the netbook trademark." Dell also argues that Psion intends "not to resume the bona fide use of the Netbook name in the ordinary course of trade." Dell believes those assertions show that Psion has abandoned the trademark.

The allegation of fraud, according to Dell, stems from the fact that Psion had abandoned the mark but still approached the USPTO to have it renewed. Dell believes Psion "attached a specimen of use consisting of an advertisement for [Psion's] netbook laptop computer, the sale which, on information and belief, had already been discontinued by [Psion] for three years."

Keith Toms, attorney with Bromberg and Sunstein LLP, a Boston-based intellectual property firm, explains that the charge of fraud on the USPTO has special meaning.

"Generally, when you think of fraud, you think of a bad act, but it carries a high standard of proof in most cases. When dealing with PTO, there is a duty of candor on a company to provide all relevant information to the Patent and Trade Office," Toms said. "What's important to note here is that if a company doesn't provide enough information -- or makes false declaration -- that fraud effectively makes that declaration invalid. Marks can be cancelled on the basis of fraud."

The most damaging claim by Dell might be the claim of "genericness." When a term becomes a common part of the lexicon, a trademark loses its power, a phenomenon Toms call "Genericide."

Dell is claiming that there is no other way to talk about netbooks, which fuels its argument of genericness. The computer manufacturer points out that in addition to the use of the word netbook by Dell, others, including HP, Lenovo, Acer, Asus, Sony, Sylvania, Samsung, MS Wind, LG, Fujitsu all make netbooks, making the term generic.

"The generic claim is the nuclear strike here," Toms said. "This is Dell saying that not only has Psion Teklogics lost its rights, but it can't get rights to the phrase 'netbook' back ever again as a descriptor of source. This is an aggressive move for Dell to take, but reasonable because the term netbook seems to be used widely across industry."

"The term 'netbook' has become generic in that the primary significance of the term to the relevant public is as the name for small and inexpensive laptop computers," Dell claims.

If the claim of genericness is upheld, the phrase netbook would become free game in the industry.

"Additionally, the generic claim would result in the term netbook being used across the industry," Toms added. "Not only can [Psion] not use it, but since it is generic, everyone else can all use it too. Dell is attempting to clean off the register and make sure it, and anyone else, can use the term netbook in connection with laptops."

Psion Teklogix did not respond to numerous attempts to contact the company for comment.

The irony here is that in August of 2008 Dell tried to trademark the term "cloud computing." The computer manufacturer actually got pretty far through the process with the USPTO before a public outcry had the move canceled.

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