Dell is trying to have a trade mark owned by rival Psion cancelled because it believes the term 'netbook' is now a generic name for small, cheap computers. Psion applied to register the term as a trade mark in 1996.
Dell has filed for cancellation with the US Patents and Trademarks Office (USPTO), arguing that the trade mark has been abandoned, that Psion has made false claims in declarations about the trade mark and that the term has now become generic.
Psion has recently been asserting its rights to control the term 'netbook' as small, cheap computers become a fast-selling item.
Some brand names become so ubiquitous that they eventually become generic names for that kind of product. US and UK trade mark laws take account of this, and allow for the cancellation of trade marks if that name subsequently becomes a common term.
"Dell is essentially arguing that 'netbook' became after registration a generic term of art to describe small inexpensive laptop computers," said Lee Curtis, a trade mark law expert at Pinsent Masons, the law firm behind OUT-LAW.COM.
"If this ground of invalidity were to be upheld in the US, given the global nature of the computer industry it is likely that Psion's trade mark registrations of 'netbook' would be vulnerable to cancellation across the globe and this would put an end to Psion's recent attempts to 're-monopolise' the mark," he said.
Dell says in its petition to the USPTO that Psion has stopped selling any computers under the 'netbook' trade mark, and that it has no intention to re-start. "Psion has abandoned the 'Netbook' mark," it says.
It also says that a claim by Psion in 2006 that it had used the trade mark for five consecutive years after its registration date of 2000 was false. It said that the USPTO relied on false statements in 2006 to allow the trade mark to continue in operation.
Dell also says that the phrase has entered the language as a common term.
"The term 'netbook' has been widely used by computer manufacturers, retailers, the media, and consumers to refer to a particular subset of 'notebook' computers which are small and inexpensive," says its filing.
"Many companies make netbooks, including Dell, Hewlett-Packard, Lenovo, Acer, Asus, Sony, Sylvania, Samsung, MS Wind, LG, and Fujitsu, among others. 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," it says.
Curtis said that if the application was being made in the UK Dell would have to show not only that the name had become generic, but that it had become so because of inaction by Psion.
"In the UK, the crucial section of the Trade Marks Act 1994 would be Section 46(1)(c) which states that a trade mark registration may be revoked if as a consequence of acts or inactivity of the proprietor, it has become the common name in the trade for a product or service for which it is registered," he said.
"If Dell were filing such an action in the UK, they would undoubtedly argue that Psion's inactivity in preventing the mark 'netbook' becoming a common name in the trade means that the term can now not be monopolised, and their recent attempts to prevent this is not just too little too late," said Curtis.
Curtis said that there are precedents for this happening.
"Dell will be hoping that 'netbook' will go the way of words such as 'escalator' and 'linoleum' which were all once registered trade marks, but are no more, as they are now generic terms free for all to use," he said.