Can Dell Challenge Psion Netbook Trademark? Good Guess Is Yes

Canadian mobile device manufacturer Psion Teklogix has been making a bit of a splash, having their lawyers send letters to makers of netbooks, warning them that the company had a trademark on the term. Now Dell has filed a petition with the U.S. Patent and Trademark Office asking that the trademark be cancelled. And if Dell’s charge is accurate, that may happen a whole lot faster than you might think.

Key is the claim that Psion no longer makes a device that bears the trademarked name. Yes, Dell is claiming that the name has become a generic term. But more important is the argument that Psion originally applied for the trademark in connection with a laptop computer product. Unlike patents, a trademark is tied to the goods or services a company claims in its application, and is only valid while the company continues to sell those products or services.

In a 2003 decision called Medinol Ltd. v. Neuro Vasx, Inc. , the USPTO’s Trademark Trial and Appeal Board ruled that a trademark applicant commits fraud if it makes a statement in an application or renewal that it “knew or should have known was false.” A recent case showing the potential problems this can cause was Bose Corp. v. Hexawave, Inc. in 2007, in which the audio gear manufacturer actually lost its federal Wave trademark because its 2001 renewal did not remove a mention of a tape player. Bose had stopped making that device, but continued to provide warranty and post-warranty service. But the TTAB said that Bose would have needed to ship product to which it had legal title (not the case for repair work), and it ordered the trademark canceled.

The Medinol decision has received a great deal of criticism from the trademark bar, and the Bose case is currently in the U.S. Court of Appeals for the Federal Circuit. Back in 1999, Psion introduced a product it called the Netbook. I searched on Psion’s web site and the most recent mention of that term was recently a note that it was affirming the trademark. Here’s how the company describes the current status:

We have been using the ‘Netbook’ trademark continuously since 1999 – whilst in recent years the extent of use has been somewhat reduced, we are still actively supplying accessories for our ‘Netbook’ ultra-portables and are also providing maintenance and support to existing users of ‘Netbook’ ultra-portables.

Under the Bose ruling, supplying service and support wouldn’t be currently considered enough to maintain the product trademark, and the trademark application mentioned nothing of accessories. Maybe Psion will find the USPTO more understanding than other companies. But somehow, I suspect its lawyers are crossing their fingers and hoping for a favorable ruling in the Bose case. And it might want to go to the page on its web site listing discontinued products … like the Netbook Pro.

Netbook Pro image courtesy Psion Teklogix.