NBCUniversal, LLC has made headlines once again, but this time, it is not to announce a new show or streaming service. On July 1st, 2022, the media conglomerate filed a lawsuit against Jay Kennette Media Group for trademark infringement of the fictional paper company, “Dunder Mifflin,” from the hit U.S. adaptation of The Office (DEADLINE). The suit was filed in the U.S. District Court for the Central District of California. As the lawsuit is in its inception details are limited. In this month’s blog post, readers can expect to find background information leading up to the filed lawsuit, explanations about trademarks and their significance, and insight from Trademark, Copyright, and Apparel Experts.com Member, Mr. Antonio R. Sarabia II.
From 2005-2013, the American version of The Office, starring Steve Carell, Jenna Fischer, and John Krasinski, chronicled the peculiarities and typical workday of office employees at Dunder Mifflin paper company. To say the show was successful is a gross understatement. According to The Washington Post, The Office received 42 Emmy nominations and won a total of 5 nominations during its nine seasons. It recently surpassed another successful NBC sitcom, Friends, for the most streamed show on Netflix in 2020. Given its impact on the public and pop culture, it was sensible for NBCUniversal to keep The Office in-house with the release of its subsidiary, Peacock TV, that same year. The network also attempted to register the trademark for the faux company name for merchandising and sales purposes, but because the Jay Kennette Media Group beat them to the punch in 2016, The U.S. Patent and Trademark Office denied NBCUniversal’s application.
Other than the situation on which this lawsuit is based, the Jay Kennette Media Group is known to register trademarks that belong to other companies and has thus garnered the reputation of an alleged “trademark squatter.” Mr. Sarabia defines a “trademark squatter” as “someone who takes the trademark of another and registers it before the owner does, usually with the intent to sell it back to the rightful owner.” Whether the media group planned to sell the Dunder Mifflin trademark back to NBCUniversal is unknown, but given the recent lawsuit filing, the outcome of who receives the fictional company’s trademark will now be decided by the judge. According to DEADLINE, “The lawsuit aims to end Jay Kennette Media’s use of the Dunder Mifflin name and destroy any remaining branded merchandise. The plaintiffs – NBCUniversal Media LLC, Universal Television LLC, and Universal Studios Licensing – also seek unspecified damages and any profits already derived from sales of the merchandise.” With the background information of this lawsuit in mind, let’s delve into how trademarks are licensed and their importance with further knowledge from Mr. Sarabia.
Q: What are the steps to registering a trademark?
Mr. Sarabia: First, file the application with the U.S. Patent and Trademark Office, then respond to any request for changes from them. In some cases, the U.S. Patent and Trademark Office will reject the application for conflict with a prior application or registration. Assuming that does not happen, next the application is published for opposition. When an application is published for opposition, anyone who believes the application conflicts with their right may oppose the application. That rarely happens. If there is no opposition, the application proceeds, and the U.S. Patent and Trademark Office issues a Notice of Allowance. If proof of use has already been filed, the application will proceed to registration. If proof of use has not been filed, the applicant has time to file that, but it must be done before the mark is registered.
Q: What is the benefit of registering a trademark?
Mr. Sarabia: A registered trademark has nationwide protection and improved damages in case a lawsuit is necessary.
Q: The Jay Kennentte Media Group has become known for being an alleged “trademark squatter.” How prevalent are “trademark squatters?”
Mr. Sarabia: Very common, though less likely in the U.S. than in other countries.
Q: How can businesses prevent being negatively impacted by “trademark squatters”?
Mr. Sarabia: Make sure that their marks are registered in each country in which they sell products or offer services and in those countries in which products are manufactured.
Q: NBCUniversal submitted their trademark application for the fictional paper company, Dunder Mifflin, several years after The Office ended. Is it normal for businesses to delay registering trademarks for products or names?
Mr. Sarabia: It is common, particularly in a situation in which the company is fictional. In other situations, there may be delays because the company may not consider how important trademarks are to its business, a mistake.
A special thank you to Trademark, Copyright, and Apparel Experts.com Member, Mr. Sarabia for graciously taking the time to participate in this month’s blog topic. This post will be updated once a settlement has been determined.