A report in Monday’s Wall Street Journal discusses how Staples – a real office supply company selling real printer paper – is now selling “Dunder Mifflin” brand paper via its online division Quill.com. Dunder Mifflin is (was?) a fictional paper company on the television show “The Office.” Even better, according the article, “the Dunder Mifflin packages will be emblazoned with slogans such as “Our motto is, ‘Quabity First’ ” and “Get Your Scrant on,” well-known phrases from the comedy series.”

This is part of a trend called “Reverse Product Placement” wherein brands that began as fiction become reality.

The concept is fascinating… and if Staples sells more of its paper because of it – even if they are paying a commission to NBC Universal – it will be a win-win I presume. However, the trademarks in the arrangement have not been well executed.

Here are the specifics of why this constitutes poor trademark management:

- No trademark notice with use of “Dunder Mifflin” name or logo on the paper packaging (see image below)

- No trademark notice in the online product listing for the paper (see below):

Dunder Mifflin Copy Paper; 8-1/2×11″, Letter Size

- No USPTO trademark filing from NBC or Staples for “Dunder Mifflin” name for paper

- No USPTO trademark filing from NBC or Staples for “Dunder Mifflin” name for paper

- No USPTO trademark filing from NBC for “Dunder Mifflin” name for television programming

- No USPTO trademark filing from NBC for “THE OFFICE” for television programming

- No filing from NBC or Staples for any of the great slogans mentioned in the article (“Get Your Scrant On!”)

For example, see the advertisement below – it features at least four trademarks (The Office, Dunder Mifflin, Quill.com, NBC) and zero trademark symbols next to any of them. It has a generic trademark notice in the lower left corner, but this is not very useful and does little if anything to help identify the “Dunder Mifflin” as a protected trademark. (Also, the * next to Oscar’s head noting that the ad does not constitute celebrity endorsement is quite interesting. Does this mean that the actors are not standing to gain in any way from the sales of the paper? I wonder!)

In short, NBC Universal Staples have invested money and risked their brand in part to launch this product. They stand to potentially make a lot of money. And they have completely overlooked protecting the names properly! If I was hoping to make millions of dollars off of a product name, I would certainly spend a few thousand to enhance the protection of that same! Why wouldn’t NBC Universal?

from Quill.com

image from Quill.com

Paris Hilton is frequently referred to as “famous for being famous”. But let’s give credit where credit is due – she has evolved into a very clever and successful businesswoman. Want proof? How about more than 20 registered trademarks!

When we last checked in with Ms. Hilton, more than 2 years ago, she owned a handful of trademark registrations.

In addition to her name, she has made the phrase “That’s Hot”® into a valuable one. According to a recent article, her manager Jason Moore understood the power of trademarks from the very start of Paris’ media appearances and her first TV show, “The Simple Life.”

His first order of business was to get Hilton to trademark her “Simple Life” catchphrase, ‘That’s hot.’

“There are a lot of ways pop culture defines things and one of those aspects is language,” he explains. “She was very hilarious and very smart with her catchphrases and the way she applied them was so unique and catchy. She had two that were quite popular, ‘That’s hot’ and ‘Loves it.’ Don’t laugh, but I literally stayed in my bed and stared at the ceiling for a whole night and broke down the difference between them in verbiage, in slogans, as adjectives, as nouns, everything. ‘That’s hot’ was the winner in my eyes. The next day I went to her with my crazy idea of trademarking it, and she was 100% open to it. She’s a very smart girl. She knew what I was trying to do and I think it made her very happy to see that there was that much vision.”

From “The man who ‘made’ Paris Hilton (CNN.com)

But a catchphrase is not a trademark unless is it used to promote a particular product or service. Use on the front of shirts is generally “ornamental” and entitled to less protection, if any. Hilton (or her manager) wisely understood this. She has made, endorsed, and or licensed her name for use with a variety of products to use it as a true brand, not just the name of a celebrity

Here is the complete list of her USPTO registrations and applications [click trademarks/logos for USPTO records]:

• CLUB PARIS – fan club
• PARIS HILTON PASSPORT - Fragrances, namely, eau de toilette and perfumed body lotion for women
• - Bags, namely, hand bags, shoulder bags, back backs, messenger bags, clutches, evening bags, wallets, luggage and leather key chain holders
• HEIRESS - Cosmetics, namely facial scrub, skin cleanser, revitalizing skin toner, skin moisturizer, hair shampoo, hairspray, hair gel, sunscreen, hair repair conditioners, hair conditioner, beauty masks made of mud, bath gels in the form of milk, bath oil, bath gel, bath crystals, body lotions, body scrub, hair shampoo, face and body soaps, fragrances, namely perfumes and colognes
• PARIS HILTON - Pet accessories, namely, leashes, collars, pet collar accessories, namely, bows and charms, pet sweaters
• PARIS HILTON - Non prescription sunglasses and sunglass cases
• PARIS HILTON - Clothing, namely, tee shirts, shirts, skirts, dresses, jackets, sweaters, shorts, sweatshirts, coats, jeans, vests, blouses, hats, underwear, slips, camisoles, bras, nightgowns, robes, socks, pajamas, bathing suits, belts and footwear
• - jewelry watches
•  - Fragrances for personal use, eau de toilette, cologne; shaving preparations, namely, shaving gel, shaving cream, shaving balm, shaving lotion, after-shave lotion, after-shave balm; skin conditioners, moisturizing hand and body lotions, hair cleaning preparations; body cream soap, body scrub, deodorant soap for the body, bath gel, shower gel, skin soap, liquid soap for hands, face and body; talcum powder, eye cream, eye gel, skin toner, deodorant for personal use
•  - FRAGRANCES FOR PERSONAL USE; PERFUME; PERFUME OILS; EAU DE PARFUM; MOISTURIZING SKIN LOTION; BODY LOTION; BODY OIL; EYE CREAM; EYE GEL; BATH PRODUCTS, NAMELY, BATH AND SHOWER GEL, BUBBLE BATH, BATH SOAP IN LIQUID, SOLID OR GEL FORM, BATH OIL, TALCUM POWDER, DUSTING POWDER, BODY POWDER, BODY EMULSIONS, BODY MASKS, BODY SCRUBS, BODY SPRAY AND BODY CREAM; DEODORANT FOR PERSONAL USE; COSMETICS, NAMELY, BLUSHER, LIPSTICK, LIP GLOSS, LIP BALM, COSMETIC PENCILS, LIP LINERS, EYE LINERS, MASCARA, MAKEUP, EYE MAKEUP, FACIAL MAKEUP, AND FOUNDATION MAKEUP; MASSAGE OIL; COMPACT CONTAINING MAKE-UP, NAMELY FACE POWDER, FACIAL MAKEUP, FOUNDATION MAKEUP, ROUGE, EYE MAKEUP, AND EYE MAKEUP REMOVER; EYE PENCILS; EYE SHADOW; EYEBROW PENCIL; FALSE EYELASHES; ADHESIVE FOR AFFIXING FALSE EYELASHES; SKIN BRONZING CREAMS AND BODY MAKEUP; SUN TAN OIL; SHAMPOO; HAIR CONDITIONER; HAIR SPRAY; SOLID FRAGRANCE FOR PERSONAL USE; POTPOURRI; INCENSE; SACHETS; MAKE-UP KITS COMPRISED OF LIPSTICK, BLUSH, MASCARA AND EYE LINER
•  - candles
• www.parishilton.com - On line wholesale and retail store services in the field of clothing, jewelry, bags, eyewear, paper goods, musical DVDs and CDs, fragrances, hair accessories and toys
• PARIS HILTON - Rhinestone sheets to decorate cell phones
• - Artificial eyelashes and adhesives for artificial eyelashes
• - Clothing, namely, tee shirts, shirts, tank tops, sweaters, sweat shirts, sweat pants, shorts, dresses, skirts, pants, jeans, jackets, coats, scarves, undergarments, lingerie, sleepwear, bathing suits, socks, hats and footwear
• - Clothing, namely, tee shirts, shirts, tank tops, sweaters, skirts, dresses, jeans, jackets, shorts, sweat shirts, sweat pants, underwear, hats, bathing suits and footwear
• - Clothing, namely, tee shirts, shirts, tank tops, sweaters, skirts, dresses, jeans, jackets, shorts, sweat shirts, sweat pants, underwear, hats, bathing suits and footwear
• PARIS HILTON - Toys, games, playthings, and sporting goods, namely, action figures and accessories therefor; stuffed toy animals; baby’s multiple activity toys; toy bakeware and cookware; balloons; toy banks; bath toys; bathtub toys; inflatable bath toys; ride-on toys; inflatable ride-on toys, equipment sold as a unit for playing card games; toy cars; dolls, beanbag dolls; paper dolls, rag dolls, soft sculpture dolls, doll accessories and playsets therefor, namely doll cases, doll clothing; doll house furnishings, doll costumes; stuffed toys; checker sets; chess sets; children’s play cosmetics; child’s multiple activity toys; computer toy construction blocks; infant’s action crib toys; flying discs; electronic hand held game units; electronic game equipment with a watch function; electronically operated toy motor vehicles; board games and game equipment sold as a unit for playing board games; card games; manipulative games; parlor games; role-playing games; stand-alone video output parlor type computer games; action type target games; coin operated and non coin operated stand-alone video output game machines; rocking horses; jigsaw puzzles; kite; manipulative puzzles; paper face masks; toy model train sets; toy model vehicles and related accessories sold as a unit; electronically operated toy motor vehicles; electronic battery operated toys; toy tricks, noisemakers; toy whistles; party favors in the nature of small toys; toy cap pistols; plush toys; soft sculpture plush toys; three dimensional cube type puzzles; toy record player for playing tunes and cassettes and discs therefor; skateboards; ice skates; toy roller skates; toy in-line skates and accessories, namely knee, wrist, and elbow pads; water squirting toys; teddy bears; wind up walking toys; wind up toys; non-motorized non-electric mobile self-propelled riding toys; toy trucks; twirling batons; zip guns; gymnastic apparatus, namely parallel bars and in- and out-door climbable playground equipment; balls, namely, playground balls, soccer balls, sport balls, baseballs, basketballs, and foam balls; baseball gloves, swimming floats for recreational use; head covers for golf clubs; golf balls; golf clubs; inflatable swimming pools for recreational use; kickboard floatation devices; gymnastic parallel bars; skis; snow skis; snowboards; skipping ropes; jump ropes; snow sleds for recreational use; surf fins; surfboards; swim boards for recreational use; body boards; swim fins; inflatable and buoyant bath toys; ride on toys; musical toys; latex squeeze toy figures; exercise equipment, namely, stationery bikes, treadmills, stair stepping machines; weight lifting machines, and free weights; non-illuminating Christmas tree ornaments; and playing cards
• PARIS HILTON - BLANK MAGNETIC DATA CARRIERS; PRE-RECORDED COMPACT DISCS, DIGITAL VERSATILE DISCS AND DOWNLOADABLE AUDIO AND AUDIOVISUAL RECORDINGS IN THE FIELDS OF MUSIC AND ENTERTAINMENT; EYEWEAR; PREPAID MAGNETICALLY ENCODED CALLING CARDS; VIDEO OUTPUT GAME EQUIPMENT FOR USE WITH TELEVISIONS SOLD AS A UNIT FOR PLAYING A PARLOR TYPE GAME; COMPUTER GAMES, NAMELY DISCS AND COMPUTER GAME TAPES; VIDEO AND COMPUTER GAME CARTRIDGES; JEWELRY; WATCHES AND WATCH FOBS; ORNAMENTAL LAPEL PINS; LEATHER AND IMITATION LEATHER GOODS, NAMELY, BAGS, WALLETS, PURSES AND LEATHER KEY CHAINS; MEN’S AND WOMEN’S CLOTHING, NAMELY, SHIRTS, SHORTS, JEANS, JACKETS, SKIRTS, SLACKS, BLOUSES, DRESSES, VESTS, COATS, SWEATERS, SCARVES, SWIMSUITS, UNDERWEAR, UNDERPANTS, SLIPS, CAMISOLES, BRAS, NIGHTGOWNS, ROBES, SOCKS, HOSIERY; INFANTS’ AND CHILDREN’S CLOTHING, NAMELY T-SHIRTS, SWEATERS, LONG SLEEVED SHIRTS, SHORTS, PANTS, JUMPERS, JUMPSUITS, OVERALLS, ONE-PIECE PLAYSUITS, PAJAMAS, SOCKS, DRESSES, SKIRTS; MEN’S WOMEN’S, CHILDREN’S AND INFANT’S FOOTWEAR AND HEADWEAR; BELTS; ENTERTAINMENT SERVICES, NAMELY, PERSONAL APPEARANCES BY A MEDIA CELEBRITY; CONDUCTING PARTIES IN NIGHTCLUBS; PROVIDING A WEB SITE FEATURING MUSICAL AND DRAMATIC PERFORMANCES, MUSICAL VIDEOS, FILM CLIPS, PHOTOGRAPHS, AND OTHER MULTIMEDIA MATERIALS; PROVIDING PRERECORDED MUSIC, INFORMATION IN THE FIELD OF MUSIC, FILM, TELEVISION, CELEBRITIES AND POPULAR CULTURE, AND COMMENTARY AND ARTICLES ABOUT MUSIC, FILM, TELEVISION, CELEBRITIES AND POPULAR CULTURE, ALL ON-LINE VIA A GLOBAL COMPUTER NETWORK; LIVE, TELEVISED AND MOVIE APPEARANCES BY A PROFESSIONAL ENTERTAINER; PRESENTATION OF LIVE SHOW AND MUSICAL PERFORMANCES
• THAT’S HOT - MEN’S AND WOMEN’S CLOTHING, NAMELY, SHIRTS, SHORTS, JEANS, JACKETS, SKIRTS, SLACKS, BLOUSES, DRESSES, VESTS, COATS, SWEATERS, SCARVES, SWIMSUITS, UNDERWEAR, UNDERPANTS, SLIPS, CAMISOLES, BRAS, NIGHTGOWNS, ROBES, SOCKS, HOSIERY; INFANTS’ AND CHILDREN’S CLOTHING, NAMELY T-SHIRTS, SWEATERS, LONG SLEEVED SHIRTS, SHORTS, PANTS, JUMPERS, JUMPSUITS, OVERALLS, ONE-PIECE PLAYSUITS, PAJAMAS, SOCKS, DRESSES, SKIRTS; MEN’S, WOMEN’S, CHILDREN’S AND INFANT’S FOOTWEAR AND HEADWEAR; BELTS

Pending applications by Ms. Hilton include

• DAZZLE BY PARIS HILTON
• HUNGRY TIGER
• and additional uses of her logo

There is only one Paris Hilton. And she has wisely taken steps to protect her brand so that others cannot sell products or services that take advantage of her brand without compensating her. As we make more and more celebrities, and as they seek to cash in on greater fortunes by using their celebrity status to sell products, the trend of celebrity trademark registration will continue to grow (see, e.g. Jersey Shore stars, Kardashian family, et al). And we have Paris Hilton, in part, to thank.

Related Posts:

• Which reality stars protect their trademarks?
• Paris Hilton’s trademarks are no joke