“Identity theft is not a joke, Jim!” – Trademark battle over “Dunder Mifflin”

“Identity theft is not a joke, Jim!” – Trademark battle over “Dunder Mifflin”

Pankhuri Malik is an IPilogue Writer, IP Innovation Clinic Fellow, and an LLM Candidate at Osgoode Hall Law School.

NBC Universal has filed a lawsuit against Jay Kennette Media Group (“JKMG”), an entertainment company over the latter’s registration of the mark “Dunder Mifflin.” As “The Office” fans know, Dunder Mifflin is the name of the fictitious company prominently featured in the show. NBC claims that JKMG is practicing trademark squatting to unfairly make money by registering trademarks belonging to others. JKMG filed for registration of the mark for sale of apparel under Class 25, and the mark was registered in July 2017. Recently, NBC’s application for registration of the mark “Dunder Mifflin” was refused by the USPTO citing JKMG’s mark, presumably prompting the lawsuit.

What is trademark squatting?

WIPO defines trademark squatting as the act of a person registering a trademark for a brand that belongs to someone else. Many companies have turned trademark squatting into a profitable business model. NBC’s “Dunder Mifflin” has been a particular target of trademark squatting for years.

In terms of defences, the doctrine of bad faith is a useful tool against the practise of trademark squatting. If NBC can successfully prove that JKMG had knowledge of NBC’s reputation in Dunder Mifflin, which is likely, and registered it with the dishonest intention of trading upon its goodwill, JKMG’s registration of the mark stands to be revoked.

JKMG’s trademark portfolio

JKMG’s trademark holdings, both current and expired marks, may prove to be useful for NBC’s case. JKMG’s trademarks include “Hillman College” (popularly featured in “The Cosby Show”), “Super Saiyan” (from the “Dragon Ball Z” universe), “Scott Body Shop” and “Tree Hill Ravens” (from CW’s “One Tree Hill”) and “Nostromo” (a ship from the movie “Alien”). While the owner of JKMG, Kenneth Talbert, has explanations for “Hillman College” and “Nostromo”, it may be difficult to justify some of his other registrations.

First-to-use trademark rights in the USA

Similar to Canada, under established US law, trademark rights vest in the first person to use the mark in commerce, or for the purposes of distinguishing their goods and/or services. While JKMG has been using the mark for hoodies, t-shirts and other apparel, NBC’s use has been for its TV show and related campaigns. NBC’s application for registration was also under Class 41 for Entertainment.

What’s next?

NBC’s goodwill and reputation in the mark is undeniable. While the show went off-air in 2013, it continues to be massively popular with extended episodes being released to date. “Dunder Mifflin,” registered or not, leads most of us to automatically think of the popular sitcom. Talbert is confident in his rights and the strength of his case, but it would be interesting to see the court’s stance in this ongoing lawsuit.