Dunder Mifflin paper chase offers a lesson in trademark protection

Intellectual Property /
John Simpson
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By Tony Poland, LegalMatters Staff • A lawsuit involving the rights to the name Dunder Mifflin – a fictional paper company featured in NBC’s The Office – is a reminder of the importance of monitoring trademarks, says Toronto intellectual property lawyer John Simpson.

According to a media report, multinational media and entertainment conglomerate NBCUniversal is suing a company it calls a “trademark squatter.” In the claim filed in a U.S. District Court at the beginning of July, NBC alleges that Jay Kennette Media Group, “built a business based on registering trademarks belonging to others.” The claim alleges that the company registered Dunder Mifflin in order either to sell the mark back to its rightful owner or to profit from “consumer confusion” by offering branded merchandise associated with the TV show, which aired from 2005-13.

Simpson, principal of IP and new media law boutique Shift Law Professional Corporation, says he believes the case offers a significant lesson for trademark owners. 

‘It is a story about the importance of monitoring trademarks’

“In my opinion, this is less a story about trademark squatting or who has better rights over this mark. It is a story about the importance of monitoring trademarks,” he tells LegalMattersCanada.ca. “Monitoring means not just seeing what else is out in the market that may be infringing on your trademark rights, which, of course, is essential. But it is also important to monitor the trademark registries to see who may be applying to register your trademarks. 

“That didn’t seem to happen here. If NBCUniversal had been monitoring, it is logical to assume they would have opposed the original Jay Kennette Media Group trademark for apparel. They didn’t. And for a regular rights owner, once a trademark is registered by someone else, they miss that opportunity and then have to go through the time, trouble and expense of trying to invalidate an existing registration,” adds Simpson. “It becomes much more expensive to get a registration invalidated. That would mean bringing an action in the Federal Court in Canada. In the long run, it is going to be much more cost-effective to oppose applications at the application stage than it will be to invalidate registrations.”

Most streamed title in 2020

As The Office became more popular during its nine-year network television run, NBCUniversal began selling branded merchandise on its website, according to media reports. The show has remained popular after it ended production and was the most streamed title in 2020.

Meanwhile, individuals and companies around the world began registering the Dunder Mifflin trademark, including Jay Kennette Media Group, which began selling clothing and apparel. The company recently filed two more applications to cover office supplies and cups.

“Surprisingly to me, there appears to have been no application for the trademark in Canada,” says Simpson, who is not involved in the case and comments generally. “Apparently, NBCUniversal has only recently learned about these registrations.

You would think that for a hit TV show like this there will be someone either internally at NBC or their outside counsel who would have spotted this earlier.” 

He says NBCUniversal could have saved itself much time and expense had it applied to register its mark prior to Jay Kennette’s application.

‘The trademarks office only looks at what is in the registry’

“The trademarks office in the U.S. would have blocked Jay Kennette’s application because NBC would have an earlier filed application for the same mark,” Simpson explains. “Just as it is in Canada, the trademarks office only looks at what is in the registry. They don’t look at what is out in the market. Even if the trademark examiner is very familiar with the TV show, they’re not looking at other sources. They’re looking at what’s in the trademarks registry.

 “This highlights not only the importance of monitoring the trademarks registry in order to oppose applications for your mark before they get registered, it also illustrates the importance of filing applications for your trademarks in a timely way so the trademarks office can block other applications.” 

Jay Kennette sees the dispute as a battle between David and Goliath, according to the media reports. However, Simpson says it is more “a story about who has better rights to this work.”

‘At the end of the day I expect that NBC will succeed’

“In my mind, it is clear NBC has better rights to Dunder Mifflin,” he says. “At the end of the day I expect that NBC will succeed in opposing Jay Kennette’s applications and invalidating this registration, but at a much greater expense than if they had acted early.”

He says a media giant with deep pockets such as NBCUniversal can afford to “drown its opponent in legal bills” in order to regain its trademark rights.

“However, for the average trademark owner, invalidating a registration can come at a significant expense,” Simpson says. “In this case, someone else was able to register Dunder Mifflin, resulting in the inconvenience of NBC facing the prospect of going to court to reinforce their rights which in itself, can be a difficult process. It is not a slam dunk.”

He says this is a classic example of an ounce of prevention being worth a pound of cure.

“If this is an instance of a true trademark squatter, they are thinking there is money to be made since it makes more sense for NBCUniversal to pay out rather than face the expense of litigation,” Simpson says. “It is a lesson to others looking to protect their intellectual property. As a trademark owner, you do not want to be in a position where someone is holding your trademark for ransom. The way to avoid that is to do your due diligence.”