Mission One: Reverse the Google AdWords "netbook" ban

If Psion's "netbook" trademarks are good enough for Google they're good enough for the rest of us, right? Not necessarily. While this is a victory chalked up for the visitors it is less significant than it has been made out to be. Furthermore, reversing it now could well prove the death knell for Psion's marks (it would be far worse to have this victory briefly than to have not had it in the first place). Here's hoping that Google do the right thing sooner rather than later.

Fortunately it shouldn't be all that difficult. Here's why:

Remember that 10m netbooks sold last year at even $200 makes this a multi-billion dollar industry already, and many of those sales take place online. It's conceivable that Google could stand to lose millions of dollars this year alone (remember sales are set to triple) so they would want to have a very strong incentive to prevent advertisers from pouring money into their coffers. It doesn't help that Psion don't currently have a "netbook" product to advertise, and even if they did with a monopoly over the term they wouldn't really need to.

Searches for "netbook" are eerily silent right now:

But run the same search for "laptop" and they'll drown you in ad boxes, sponsored links and shopping hits:

That's not all. The process for having a trademark banned from AdWords is surprisingly straightforward. From the Google Adwords Complaints Procedure page you just need to go here to fill out this form. According to this Google "receive a large number of trademark complaints every day, which [they] review in the order received". So basically it looks like someone from Psion submitted a web form and someone at Google moderated the result. It wouldn't have landed on Eric Schmidt's desk anyway, let's just say that.

Cutting to the chase then, your mission (should you choose to accept it) is to use this same complaints procedure with a view to having the trademarks reversed. This should be particularly effective for those of you who have netbooks to sell, but even if you don't it can't hurt to let them know how we feel - remember we only need one of these to make it through:

• Fill out this form
• Specify your relationship and trademark owner as "N/A" (no trademark = no owner, right?)
  
• List "Netbook" as the trademark, country "N/A", type "Word" and Registered? "No, I claim use rights"
  
• Select "Your complaint involves all advertisers."
• Select all three scope boxes.
• Under "Clarifications" enter something like "This trademark is both descriptive and generic and should not be allowed protection." Or better yet use the text below (or something like it).
  
• Select both legal clarification checkboxes.
• Submit the form and email it to ads-trademarks@google.com for good measure (and fax/post it if you can).

That's pretty light weight so far so you might want to flesh out the clarifications with something like this somewhat more lawyer friendly verbiage (note the DOC-CONTROL example that shows that it doesn't matter that the terms Internet and Notebook are truncated to form Netbook):

"Netbook" is descriptive

The "netbook" mark (a portmanteau of Internet and Netbook) merely describes features and characteristics of a class of laptop computers and thus is ineligible for trademark protection. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified services. TMEP §1209.01(b); see In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); In re Gyulay, 820 F.2d 1216, 1217-18, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987). Moreover, a mark that identifies a group of users to whom an applicant directs its services is also merely descriptive. TMEP §1209.03(i); see In re Planalytics, Inc., 70 USPQ2d 1453, 1454 (TTAB 2004).

The determination of whether a mark is merely descriptive is considered in relation to the identified services, not in the abstract. In re Abcor Dev. Corp., 588 F.2d 811, 814, 200 USPQ 215, 218 (C.C.P.A. 1978); TMEP §1209.01(b); see, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061 (TTAB 1999) (finding DOC in DOC-CONTROL would be understood to refer to the “documents” managed by applicant’s software, not “doctor” as shown in dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242 (TTAB 1987) (finding CONCURRENT PC-DOS merely descriptive of “computer programs recorded on disk” where relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system). “Whether consumers could guess what the product is from consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).

“A mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the applicant’s goods or services.” In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)); TMEP §1209.01(b). It is enough if the term describes only one significant function, attribute or property. In re Oppedahl, 373 F.3d at 1173, 71 USPQ2d at 1371; TMEP §1209.01(b).

As shown in the Wikipedia "Netbook" article (http://wikipedia.org/wiki/Netbook) and the definition below, "NETBOOK" is a descriptive term for a class of laptop computers:

"A subnotebook computer that costs less than $400. The term was coined by Intel in 2008 for computers that use the Intel Atom microprocessor. However, it may refer to small PCs that use non-Intel CPUs such as those made by AMD and Via. See notebook, subnotebook, Atom, NetTop and Ultra-Mobile PC."

See Computer Desktop Encyclopedia © 1981-2009, The Computer Language Company Inc., (http://lookup.computerlanguage.com/host_app/search?cid=C000401&term=netbook).

The term is merely descriptive within the meaning of Section 2(e)(1) of the Trademark Act because the average prospective purchaser of the services, when encountering the mark in connection with the services, would immediately perceive a feature of the product (namely Internet connectivity). In re Omaha National Corporation, 2 USPQ2d 1859 (Fed. Cir. 1987).

Generic

In addition to being merely descriptive, the mark appears to be generic in connection with the identified services and, therefore, incapable of functioning as a source-identifier for applicant’s services. In re The Am. Acad. of Facial Plastic & Reconstructive Surgery, 64 USPQ2d 1748 (TTAB 2002); In re A La Vieille Russie, Inc., 60 USPQ2d 1895 (TTAB 2001); see TMEP §§1209.01(c) et seq., 1209.02.

Well that's enough from us. If you don't want to submit the form then drop a note to ads-trademarks@google.com anyway telling them how you feel about their decision to block the descriptive and generic term.