We know what the first thought of ‘The office’ show fans after reading the title of this blog would be. The title of this blog could certainly be an episode of ‘The Office’. However unfortunately it is not, there has come up a real lawsuit which is now happening between NBC Universal and the company that had registered the trademark for Dunder Mifflin some six years ago. The company being sued is known as Jay Kennette Media Group, and Jay Kennette is the owner. Dunder Mifflin is the name of the entity showcased in NBC Universal’s ‘The Office’ which has become the topic of the issue arising between the two parties in the lawsuit.
Based on the Ricky Gervais-fronted UK series, ‘The Office’ aired from 2005-13 on NBC. Steve Carell, John Krasinksi, Jenna Fischer, Rainn Wilson and others led the ensemble comedy about the people and their daily grind at the Scranton, PA, branch of Dunder Mifflin Paper Company. The sitcom remains wildly popular in syndication and streaming.
According to the lawsuit arising between the two parties wherein the plaintiff is NBC Universal and the defendant is the company- Jay Kennette Media Group, NBC Universal refers to the media group as a ‘trademark squatter’ or a company that has tried to build its own business based on registering trademarks that belong to others.
The defendant claims that six years ago, The Jay Kennette Media Group registered the Dunder Mifflin brand with the U.S. Patent and Trademark Office in order to market hoodies, coats, shirts, and a wide variety of other clothing items associated with The Office.
A range of Dunder Mifflin-related goods, including coffee mugs, caps, Sharpies, self-stick notes, and other items, have been promoted by NBCU for a while and hence is going after this company in order for them to obtain the trademark of the name. They want to stop the Jay Kennette Media Group from utilising the Dunder Mifflin name and get rid of any products that have done so in the past. Additionally, NBCU is asking to be paid damages from the revenue already generated from the sale of the merchandise.
NBCU has also stated that they reportedly submitted a trademark registration for Dunder Mifflin in 2020, but it was rejected because the Jay Kennette Media Group already owned the trademark, the rejection of the application will also be appealed by NBC.
Through the mean of the lawsuit raised, NBCU alleges that this media company purchases trademarks that do not belong to them in order to either resell them to the original owners at a high price or to cause consumer confusion by selling branded goods from TV shows, video games, and movies with which they have absolutely no affiliation to.
Legal Remedies available with NBCU:
Filing a lawsuit against the offender –
One of the most frequent types of trademark-related litigation is trademark infringement. People whose trademark rights have been violated file a lawsuit against the offender/defendant in order to obtain compensation for the economic harm that has resulted from the infringement of their rights. Plaintiffs may also be awarded monetary relief including damages, profits, and litigation costs, however in some circumstances, particularly in situations of trademark infringement, “compensation” may not always entail a monetary reward. In the present case, NBCU has already filed a lawsuit against the said company for infringing the trademark ‘Dunder Mifflin’ in the sale of its respective merchandise.
An Injunction issued by the court –
Plaintiffs may ask the court to impose an order requiring the infringement to stop all unlawful behaviour, including the use of the infringing trademark. The injunction may demand that the infringer immediately cease all sales of the infringing product or that sales end after the expiration of a reasonable sell-off time. Injunctions can be either temporary (i.e., only in effect while the trademark infringement litigation is pending) or permanent (meaning that the injunction is issued at the conclusion of the trademark infringement lawsuit). In the present case, NBCU has asked for a permanent injunction and through the lawsuit aims to end Jay Kennette Media’s use of the Dunder Mifflin name and to destroy any remaining branded merchandise. At the same time, NBCU is asking to be paid damages from the revenue already generated from the sale of the said merchandise.
Ways in which the company being sued can defend itself:
The Jay Kennette Media Group who is the defendant in this lawsuit can back up its case by using the defence of the ‘fair use doctrine’ and proving that the work was independently created and not copied. At the same time, The Jay Kennette Media Group registered the Dunder Mifflin brand with the U.S. Patent and Trademark Office in order to market hoodies, coats, shirts, and a wide variety of other clothing items. This registration of the trademark on their part was already done 6 years ago however NBCU did not do the same and failed to register Dunder Mifflin as its trademark.
Fans of ‘The Office’ have been pleading for a resurrection or reunion of the show, which is still quite popular. However, this dispute may need to be resolved first because NBC would need to possess the name rights in order for Dunder Mifflin to be utilised on television. Hence, NBCU must have some better lawyers at its disposal and now must fight to get this trademark back.
