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Summary:

UPDATE: Psion responds again and we’ve added their further clarifications at the bottom of this post. We broke the story about Psion’s trademarks of the term “netbook” and their legal team’s defense of same by sending out letters to those openly using the term.  This has […]

UPDATE: Psion responds again and we’ve added their further clarifications at the bottom of this post.

We broke the story about Psion’s trademarks of the term “netbook” and their legal team’s defense of same by sending out letters to those openly using the term.  This has kicked off an interesting discussion about the defensibility of a term that Psion hasn’t used for years.  Today we received correspondence from Origin, the legal firm representing Psion’s trademarks who wanted to clarify their position:

I just wanted to address a mistaken assumption made by some of your readers (including journalists in more countries than I now care to count).

When you said in your 23 December blog that I’d written to ‘some netbook enthusiast sites’ asking them to cease and desist using the ‘Netbook’ registered trade mark, many readers assumed that these letters had gone to people simply commenting on the tech scene.  One of your early posters, called Andy, even said:  “Why go after a bunch of bloggers? It’s not like they’re profiteering off the name.”

Andy makes a fair point.

Here are the facts.

We have sent letters out solely to those making a direct, financial profit from use of the ‘Netbook’ trademark.

95% of all letters have been sent to retailers and manufacturers using the ‘Netbook’ trademark (including the very largest players in this space.  You’ll no doubt be aware that few portable manufacturers in fact use the ‘Netbook’ term at all.  For example, Asus, a pioneer in this space, does not to any appreciable extent – it’s an Eee PC.  Not an Eee PC ‘Netbook’.  But it’s a different picture in retail and our over-riding priority is to persuade the retail community to adopt a different term.)

5% have been sent to websites that have sponsored advertising or other for-profit links that include the prominent use of the ‘Netbook’ trademark and a link to a retailer or manufacturer using the ‘Netbook’ trademark.

0% have been sent to straight blogs, tech enthusiasts sites or review sites – i.e. with no prominent ‘Netbook’ related sponsored advertising or other ‘Netbook’ related for-profit links.

netbook-ads1Attached is a screen grab (pictured right) from the http://www.small-laptops.com site, whose letter you used.  As you can see, it falls in that 5% category.  (He can of course easily remove the ‘Netbook’ related sponsored advertising or other ‘Netbook’ related for-profit links, if he wishes to).

When we started this project for Psion, we drew a firm distinction between entities profiteering off the ‘Netbook’ name, and those not doing so.  Neither we, nor Psion, thought that it would be fair, proportionate or sensible to start this process off by writing to those not profiteering financially and we have not done so.  Journalists and bloggers obviously have to use some term to refer to the new class of ultra-low cost portables – we’d rather they didn’t use ‘netbook’ now that they’re aware of Psion’s registered trade marks, and we hope that they too will transition to whatever term becomes the legitimate generic.  But are we about to start a wave of lawsuits against journalists and bloggers? The answer is an emphatic ‘no’. Our priorities lie elsewhere and always have done.

I’ll obviously need to send clarificatory emails out to those journalists who got the wrong end of the stick, but if you wanted to post something yourself first, please let me know and I’ll hold off a day or so.  (Not exactly a scoop, but just a professional courtesy.) I have, for example, just received a mail from Der Spiegel in Germany asking for urgent clarification, after reading a posting in the UK’s Guardian. I do need to give them both all the facts asap.

There is of course a legitimate and important question centered on the extent to which corporations can influence or control the language we ordinarily use.  If your readers are really interested in the words they use, then perhaps they might give some careful thought to why they started using the term ‘netbook’ in a generic way in the first place. If you’re aware of substantial ‘generic’ use that pre-dates Intel’s 2008 marketing efforts to promote its Atom processor, I’d be interested to learn of it.

Incidentally, we have started to receive direct responses from recipients of our letters.  So far, all have agreed to use a different term. I think that’s because, when you really look carefully at the merits of the situation, both legal and ethical, Psion has a fair point.

Most retailers and manufacturers in my experience respect others’ registered trademarks – after all, they are frequently their own most valuable assets.  But there’s obviously quite a mountain to climb here.

Anyway, best wishes for the Christmas season.  If you have any follow-up questions at all, feel free to let me know.

So this response clears up some things but muddies up the waters for those sites who use generic ads like the Amazon ad they pictured.  The only way I can interpret this response is that any blogs or sites that use third party ads with the term “netbook” in it, something sites cannot easily control,  may be open to a cease and desist letter of your very own.  At least Origin and Psion are willing to address this but it’s still not clear where this will end up.

UPDATE: Psion reps have sent us further clarification on their position since this went live:

Thanks for posting my response.

Just a couple of further points of clarification.

First, Psion has been using the ‘Netbook’ trademark continuously since 1999 – perhaps in recent years the extent of use has not been that great, but Psion is still actively supplying ‘Netbook’ accessories and also providing maintenance and support to existing ‘Netbook’ users.  Registered trademarks aren’t just for protecting multi-billion dollar brands.

Secondly, where a blogger uses context sensitive advertising that is completely outside of its control (so it has no knowledge at all whether a ‘Netbook’ related advert will be placed in its blog site), then we’re taking the view that we need to focus on working on persuading the featured retailer to adopt a term other than ‘netbook’.  So if any recipient of one of our letters is in that position, if they want to let me know, that would be helpful all round.  Although we can’t accept that use of ‘netbook’ in a generic fashion is legitimate, our priorities lie elsewhere.

  1. they are a dead brand with no clout, looking for cheap publicity & to make a quick buck. how long do you think it will be before they approach Intel looking for an offer to buy out their TM?

    it’s no coincidence they waited this long to start sending out C&D letters.

  2. Going after third parties accepting ads from companies using the word Netbook is excessive and would give Psion a bad name (that is assuming people thought Psion was still in business).

  3. I don’t have a blog or site or anything, but I was under the impression that sites couldn’t really control the content of the ads; I thought the ad companies (like google, yahoo, etc) controlled that.

  4. I hate lawyers. Anything for a buck. Idiot.

  5. Tollie Williams Sunday, December 28, 2008

    IMHO…

    While it’s (perhaps, by far) the most reasonable defense I’ve heard over USPTO related claims, I think, as if often the case, the general vernacular has the better claim.

    Just as the portmanteau of “iPod(R)” and “broadcasting” formed the natural word of podcasting, as a means of describing the action of broadcasting audio files primarily to iTunes for use on iPods, so does the “Notebook” and “Internet” form a reasonably natural and descriptive term – netbook – for small portable computers that primarily are used for accessing the internet.

    Play-Doh(R) uses the unique spelling to distinguish their product from the general description of what it is (play dough).

    On the other hand, Saran Wrap(R), made the mistake of attempting to trademark a term that is little more than self descriptive. Saran is (was) the material; wrap food is what it does. Now, saran wrap is understood as a term synonymous with plastic wrap.

    … and so should be netbook – a generic term descriptive of small, lower powered notebooks primary best for internet access.

  6. Hi,

    That’s one of the most reasoned and reasonable letters from a lawyer about trademark rights almost ever.

    Psion created the whole category almost 3 decades ago, they were first and best, they fully deserve any benefits that come from that, and they’ve never been patent trolls, they built real products, and could have done so much more still.

    They might no longer be in the consumer space, but Psion group (with it’s subsidiaries) is also one of the largest suppliers of mobile corporate computing solutions. There are also people within it, that haven’t entirely given up the possibility of re-entering the consumer market (great previous re-defining R&D)!

    And I know all that without ever having been a shareholder or employee of the company.

    Yours kindly,

    Shakir Razak

  7. Shakir,

    Nothing to do with patent trolls or possibility of market re-entry. Trademark enforcement is all about retaining ownership through use, and Psion haven’t had a netbook on the markt for five years.

    Which interestingly, is about the time the Courts normally allow before they will automatically pass on a trademark through inactivity.

    Well-reasoned it may be (and we clearly have a PR-savvy law firm here) – but wothout enforcement through use, Psion have a VERY weak case. And they know it.

    David.

  8. How stupid are those people? its obvious theyve never had any dealings with ad companies, or they wouldn’t say that it’s easy to stop specific ads. These people should be glad noone gives a crap about them or theyd lose their customers, somehow i doubt they have any.

  9. I don’t really get it: Psion dropped its Netbook” product before 2007 and was earning no revenue from the name. Come 2008 or thereabouts, people start talking about netbooks, and Psion is earning no revenue from the term. 2009 onwards, if Psion gets its way, retailers and advertisers stop using the term “netbook”, and Psion earns no revenue from the name, while alienating all those people who find the term a convenient shorthand for a low-powered notebook. So where is the revenue stream or positive PR for Psion?

  10. I was playing around with some ideas for alternative terms. This is on the assumption that these “formerly misnomered as ‘netbook'” devices are to develop into not ‘very small computers’ but rather, simply ‘web browsers on batteries’ – ie, other more ‘computery’ applications fall to the periphery and effectively the browser becomes the ‘desktop’ default application. In other words, they become effectively just web browsers – on batteries.

    Assuming the term ‘book’ is desirable (it’s small, like a book; it opens up (admittedly the wrong way round); like a book; it’s informative and entertaining, like a book; etc):

    • Webbook – sounds clunky, two ‘b’s next to each other, not nice.
    • httpbook – accurate, but too clumsy to read, let alone say out loud.
    • hypertextbook – getting closer, but too long, and a bit 1945 ‘Memex’.
    • hyperbook – now, that’s more like it. This has sales appeal. Has this been claimed for such a usage, yet?

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