The learning behind the trademarks registration of The Office

By Cristina Arenas-Solís, Member of Ferraiuoli LLC Intellectual Property Practice Group

This article was originally published in Spanish in Microjuris

For the first decades of the 21st century, a TV series called The Office became extremely popular. The program was a hit both in the United States and in other parts of the world.

The series takes place in Scranton, Pennsylvania. The plot revolves around the daily work life of employees of a fictional company that sells paper called Dunder Mifflin. The Office was produced and aired on NBC.

Even though NBCUniversal owns all the intellectual property rights to the series, the company never registered the Dunder Mifflin trademark. Nevertheless, for many years, NBCUniversal offered and sold merchandise under the Dunder Mifflin name, including shirts, home accessories and other show memorabilia.

In addition, it licensed said name to American retail company Staples Inc. so that it could sell different types of products under that brand, including paper, notebooks and other office supplies. At all times, NBCUniversal has acted as the owner of the Dunder Mifflin trademark.

However, since it had not been registered with the United States Patent and Trademark Office (USPTO), a company called Jay Kennette Media Group LLC tried and succeeded in registering the Dunder Mifflin trademark in the United Sates.

On November 2020 NBCUniversal attempted to register the trademark within the USPTO but the registration was denied due to the prior existence of the Dunder Mifflin trademark by Jay Kennette Media Group LLC. Although the right to a trademark is not acquired by its registration, the first one to register it prevents the next one from being able to register the same or a similar trademark. This is what is happening to NBCUniversal, which, without a doubt, owns the trademark, but cannot obtain the registration of it.

Currently, NBCUniversal has filed a lawsuit against the registered owner of the trademark, alleging that this company is a trademark squatter (someone which registers a known trademark but isn’t its original owner). NBCUniversal alleges that Jay Kennette Media Group LLC has done the same with other trademarks from the TV and movie industry.

The defendant has already stated that it has no intention of handing over the trademark registration to NBCUniversal without a legal fight. This means that NBCUniversal will have to spend large amounts of money in order to get back what really belongs to the company, all due to the carelessness of not registering the Dunder Mifflin trademark in the first place.

Sometimes life really imitates art, as this NBCUniversal stumble is something that could easily have happened to Michael Scott, Dwight Schrute and other Dunder Mifflin employees and managers on The Office. 
Ferraiuoli LLC

Ferraiuoli LLC (FLLC) was founded in 2003 by the late Blas Ferraiuoli-Martínez, Eugenio Torres-Oyola and María Marchand-Sánchez. This group was then joined in 2004 by Fernando J. Rovira-Rullán, thus forming the founding core of FLLC. FLLC has grown exponentially since its founding from a law firm with three attorneys and a support staff of three to its current size of 54 attorneys with a support staff of 38. Also, FLLC has grown from initially being known as an intellectual property and corporate law boutique law firm to a multiservice law firm that handles most matters relevant to a business while continuing to earn praise for its leading intellectual property and corporate practices.

FLLC has been ranked as a leading law firm in Puerto Rico by the professional publication Chambers Latin America in intellectual property, corporate, bankruptcy, labor & employment, real estate, and tax law. Moreover, 17 FLLC partners have been ranked as leaders in their field by the same publication. 4 FLLC partners are ranked as leaders in Intellectual Property, no other firm has more than 2. This recognition in such a short period of time is a tribute to FLLC’s business model.

FLLC prides itself in doing its work faster and more cost-efficiently yet with the same quality as that of its main competitors. The founding name partners are available at all times to attend to client matters. Their work ethic sets the tone for the rest of the firm. FLLC’s founders’ goal has been steady from the outset: become one of the premier multiservice law firms in Puerto Rico.

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