Could Facebook Lose Its 'Facebook' Trademark After Being Too Aggressive In Trademark Bullying?

from the lamebook dept

We’ve talked in the past about Facebook’s rather aggressive trademark theories, under which it appears to believe that any website that starts with “face” or ends with “book” somehow violates its trademarks. This is pretty excessive and I have trouble seeing how it meets the likelihood of confusion test in most cases. While it has filed some lawsuits, it’s also directly opposing trademark filings at the USPTO. For example, it is currently arguing that the website Shagbook cannot trademark its name.

Shagbook has filed its response to the opposition, which you can read below, but it hits back pretty hard, noting a few key points:

  • Facebook should never have been allowed to trademark “Facebook.”

    The term was in common use in the English language well before Opposer began using the term in connection with its services. The term is used generically by many members of the public and by a wide variety of organizations. Because the term ?facebook? was used by many parties descriptively and generically well before Opposer?s date of first use of the term, the term is generic and incapable of trademark protection under the laws of the United States.

  • Facebook is engaging in trademark misuse and trademark bullying for anticompetitive reasons:

    Opposer?s opposition should be denied under the equitable doctrine of unclean hands. Opposer has engaged in trademark misuse and trademark bullying by abusively using oppositions, litigation, and threats of the same to maintain a competitive market advantage. For these reasons as well as those outlined in Applicant?s counterclaims below, the opposition should be denied.

  • There’s no likelihood of confusion, especially since Shagbook is a dating site, and Facebook has explicitly said it is not:

    There is no likelihood of confusion between Applicant?s proposed mark and the mark cited by Opposer even reading the description of Applicant?s services broadly. Alternatively, Applicant is only using the mark in connection with its online dating related services, and as such, there is no likelihood of confusion with respect to the actual services provided by Applicant as Opposer does not provide online dating services.

  • Not only is ‘Facebook’ generic, the company itself has used it in a generic manner:

    In addition to numerous uses by third parties, Opposer has actually used the term ?facebook? in a generic sense, and is estopped from now claiming that it is not generic.

The filing then includes a bunch of counterclaims that go into great detail on why Facebook itself shouldn’t have the trademark on “facebook”. I have no idea if this will get very far, but it certainly would be interesting if Facebook ends up losing its own trademark due to its own overly aggressive trademark actions against others.

Filed Under:
Companies: facebook, shagbook

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Comments on “Could Facebook Lose Its 'Facebook' Trademark After Being Too Aggressive In Trademark Bullying?”

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93 Comments
Marcus Carab (profile) says:

Re: Re: Re:3 Re:

While it would indeed be surprising if Facebook’s trademark was invalidated, I’d say there’s a big gab between that and Obama being a secret muslim.

Your issue is not with the reporting – your issue is that you apparently 100% sure this filing will have no effect. But why are you so sure? This is a real filing in a real case over a real trademark dispute, and it raises some interesting and potentially convincing points – all of which you have failed to respond to.

So for people who believe this filing actually stands a chance, albeit a small one, what is so misleading or harmful about asking the question “could it happen”?

Sorry, I just don’t see it. Yes, there’s such a thing as bad reporting, but this doesn’t strike me as a particularly egregious example or even an example at all. For that matter, it’s not even reporting – it’s an opinion piece analyzing the news. It’s impossible to analyze an ongoing lawsuit without including a little bit of speculation

Ninja (profile) says:

Re: Re: Re:4 Re:

It’s impossible to read this blog without seeing a little bit of Trolling.

I can see your point, the person you are responding to is probably drooling holding his wooden mace with his long superior members trying to figure out how to respond to the non-existent “Pirates should have everything for free.” he somehow read in this article.

Anonymous Coward says:

Re: Re: Re:4 Re:

I’m not 100% sure this filing will have no effect (nor am I 100% sure that Obama is not a secret muslim).

First, I think the filing may very well be successful on the likelihood of confusion point.

However, I am reasonably certain that it will not be successful on any of the grounds that attack the validity of Facebook’s trademark.

Now, I’m about to explain why I think those arguments are bad. But before I do, I’ll note that nobody has given any reason as to why those arguments might be *good* or really given any analysis of the arguments.

This is typical. Argument put forth by the side asserting any IP rights, always criticized and any criticism given credence. Argument put forth by the side rejecting IP rights, no critical analysis whatsoever, but reported as “key points.”

So, on to the merits:

First point: Whether a term was in common use or “used generically” prior to use as a trademark does not make a difference in whether the trademark is valid. For example, APPLE was used descriptively and generically prior to use as a trademark for use with computers or music. What matters is whether its use in connection with a particular product/service is descriptive or generic. The product Facebook provides is not “a facebook” as that term is used generically. It is a social networking website.

Even if it were descriptive, you can have trademark rights in a descriptive term if people come to associate that term with a particular source. Everyone on the fucking planet knows who FACEBOOK refers to when used in connection with Facebook.

Second point, the trademark misuse claim flies directly in the face of the respondent’s best argument: that the websites are not competetive.

Third point, as I stated, this is a decent argument and might win, but it doesn’t affect the validity of the FACEBOOK mark.

Fourth point, same as first. “Facebook” may be a generic term for something, but it is not a generic term for the services provided by Facebook.

The term was in common use in the English language well before Opposer began using the term in connection with its services. The term is used generically by many members of the public and by a wide variety of organizations. Because the term ?facebook? was used by many parties descriptively and generically well before Opposer?s date of first use of the term, the term is generic and incapable of trademark protection under the laws of the United States.

Anonymous Coward says:

Re: Re: Re:6 Re:

First, I made no snide comment regarding speculative reporting.

Second, I don’t think there’s anything wrong with someone simply posting a summary of their opinion.

I do, however, think there is something wrong with requiring *only* those people you disagree with to provide a lengthy explanation of their position, while not requiring any similar support for the contrary position, even though nobody has provided any explanation of why that position could possibly have merit.

Next time, consider applying the same standards equally.

Anonymous Coward says:

Re: Re: Re:2 Re:

Why? Should be address every nutball court filing just for fun? Facebook is a pretty strong brand, one of those “ask anyone what Facebook is, and they will know” sort of things. It is incredibly unlikely that vague legal arguments about the existance of the word in the dictionary would hold much sway.

The story in the end isn’t about Facebook. It’s just Mike working for page views and pandering to the “sky is falling” crowd.

Not an Electronic Rodent says:

Re: Re: Re:3 Re:

The story in the end isn’t about Facebook. It’s just Mike working for page views and pandering to the “sky is falling” crowd.

I’d see it as more pandering to the “If only laws made sense and had relevance to the real world and how humans interact” crowd….. but that’s just me.

Anonymous Coward says:

Re: Re: Re:6 Re:

Lol. typical response. I can’t count the number times a point made in a TD article gets roundly destroyed and then someone counters with “well, that’s not the point of the article so you’re focusing on the wrong thing.”

That is NOT the point being discussed here. Nobody here has contradicted the likelihood of confusion bit.

It’s the “Facebook could lose its trademark” bit that is being discussed in these comments. Is that off limits or something?

Anonymous Coward says:

Re: Re: Re:7 Re:

“I can’t count the number times a point made in a TD article gets roundly destroyed and then someone counters with “well, that’s not the point of the article so you’re focusing on the wrong thing.”

Then can you provide a single example of a point getting roundly destroyed? With so many examples you should have one handy for us to learn from.

Anonymous Coward says:

Re: Re: Re:8 Re:

Well, how’s about the notion that FACEBOOK is generic when used in connection with the services provided by Facebook.

Numerous people here have acknowledged that FACEBOOK is a strong brand associated with Facebook. Yet, a term that is “generic” is “incapable of serving as a means ‘by which the goods of the applicant may be distinguished from the goods of others.'” See, e.g., In re Bongrain International Corp., 894 F.2d 1316, 1317 n.4 (Fed. Cir. 1990).

Obviously, the term FACEBOOK is capable of distinguishing the social networking services provided by Facebook from, say, the social networking services provided by Myspace.

Jeffrey Nonken (profile) says:

Re: Re: Re:9 Re:

Sure, there’s strong brand recognition. But why does that automatically equate to a trademark? That would be like some company with a strong brand recognition of some name like, say, “Windows” trying to get a trademark on the word “windows” so they can sue the snot out of anybody using it as part of any other brand name. (I just pulled that name out at random. Really. No, honest, I swear.)

Marcel de Jong (profile) says:

Re: Re: Re:9 Re:

Facebook.com can have a strong brand name even without the whole trademark thing.

Brand name is separate from a trademark.

Besides all that, being a trademark bully, hurts the overall image of Facebook.com

And another thing, this isn’t a case where someone else is using the name “facebook”, but rather just used “book” in their name.
Sure, you could say that they are lifting on the coattails of Facebook.com when going that route, but book is a very generic and broad term, even more so than facebook. And by objecting to a site using “book” or “face” in their name, just because Facebook.com has a trademark on the name Facebook, is just petty and silly.

Not an Electronic Rodent says:

Re: Re: Re:5 Re:

Sure. Because in the real world, when you hear “Facebook,” you don’t think it refers to a particular company or source of social networking services, right?

Nope, like you presumably I think of the well known site Facebook. On the other hand anything else I hear named including the standard English words “face” or “book” at most I will think “yeah so thats where they got the idea for the name from” if it happens to be a concatenation of 2 single syllable words rather than thinking of any association between the 2 that might induce any kind of “confusion”.

Another AC says:

Re: Re: Re:3 Re:

“It is incredibly unlikely that vague legal arguments about the existance of the word in the dictionary would hold much sway.”

Once again you’re missing the point. Clearly the ones filing for the trademark that Facebook is objecting to think their arguments are not vague and have strong merit. Same goes for many people who are not you. Just because you disagree does not make you right.

They are asking the USPTO to decide, that sounds newsworthy to me. Again, because you think otherwise does not make you right. Perhaps you can give us a reason how the claims are vague or without merit, besides just your opinion?

Anonymous Coward says:

Re: Re: Re:4 Re:

“Clearly the ones filing for the trademark that Facebook is objecting to think their arguments are not vague and have strong merit.”

No. Attorneys do not believe that every argument they file “has strong merit.” They make the best argument they can under the circumstances, and hope for the best.

I mean, when someone makes a ridiculous claim against Google, Mike calls out the ridiculous nature of it. But when someone makes a ridiculous claim against Facebook (and against IP rights), it’s not criticized.

Anonymous Coward says:

Re: Re: Re:6 Re:

“Wait…so are you saying you think Mike thinks Facebook is evil? I seem to recall reading numerous postings by Mike calling out the Winklevoss claims against Facebook as ridiculous.”

I hope you realize there is nothing contradictory between Mike thinking Facebook is evail and Mike criticizing the Winklevii. Right?

More to the point, I’m saying that Mike applies different levels of critical analysis depending on his preexisting prejudices.

Anonymous Coward says:

Re: Re: Re:7 Re:

More to the point, I’m saying that Mike applies different levels of critical analysis depending on his preexisting prejudices.

Absolutely. This. Sometimes I give Mike the benefit of the doubt and think he’s just blind. But usually I think it’s a conscious effort to misrepresent and spread FUD. Not to mention, spread an obvious pro-piracy point of view.

DannyB (profile) says:

Re: Re:

> Speculative crap.

Let me tell you a story from just a few years ago.

There was a Linux distribution called Lindows.

Microsoft sued for trademark infringement.

Lindows pointed out that Windows should never have been allowed to be trademarked.

Faster than you could say Anonymous Internet Troll the parties settled out of court. Lindows agreed to rename its company and product, and get this . . . Microsoft paid Lindows $20 Million.

Hmmm, Microsoft didn’t seem to think it was speculative crap.

ClarkeyBalboa (profile) says:

Re: Re: Re: Re:

Hmmm…Lindows claims Windows trademark is invalid because it is too generic for trademark validation, despite it being the most used OS in the world. Shagbook claims Facebook is too generic for trademark validation despite it being the most popular social media site in the work…Has your brain stopped working that you can’t draw the parallel?

Marcel de Jong (profile) says:

Re: Re: Re:5 Re:

The fact that Microsoft decided to pay Lindows instead of the other way around may mean that there’s more to this than you think.

And it’s relevant as how ClarkeyBalboa explained it. Whether it’s right or wrong is not up to us to decide but up to a judge, if he or she gets a chance to do so.

Windows as a brand name is strong, about as strong or even more so than Facebook’s brand name. Both are an established trademark. In the Windows-vs-Lindows case Microsoft decided to settle out of court in case the judge would rule against Microsoft and invalidate the trademark on Windows. Even though it’s an already very much established trademark.

Facebook is a word very much like Windows. Very generic. The chances that a judge invalidates said trademark isn’t 0. It’s a real possibility, and one I’m sure Facebook will have to keep an eye on.

And who are you to decide whether a claim is meritless or not?

DannyB (profile) says:

Re: Re: Re: Re:

> How is it relevant to Facebook?

It is pointing out to the other anonymous that I replied to that there is better than zero chance that Facebook could lose their trademark.

The point of my reply was to not be quite so confident that it couldn’t happen. It could.

I hope that answers your question how it is relevant.

> I wonder who “estimated” that $20 mil figure?

Sorry, I don’t understand what you are asking.

Anonymous Coward says:

Re: Re: Re:2 Re:

Better than zero isn’t saying much.

Moreover, Microsoft buying a mark doesn’t really show that at all. Whether or not Windows is or is not generic or descriptive in connection with an operating system (which is not shown one way or another by your example) does not show one way or another whether Facebook is generic or descriptive in connection with a social networking website.

The link you provided says it “is estimated” that Microsoft paid $20 mil for the Lindows mark, without any citation. Since I would be shocked if the settlement were not confidential, I’m wondering if that number just appeared out of the ether or what.

out_of_the_blue says:

Let's help it along: everyone use "facebook" generically.

Lew Kornfeld (of Radio Shack) I think invented this technique of undermining trademark. Paraphrasing his usage examples:
“Wow, that’s some amazing facebook crap ya got there.”
“Let me facebook and get back to you.”
“I’ve got some more info that I want to facebook.”

DannyB (profile) says:

Re: Re: Re:2 Re:

I have a contrary point of view, but not a contrary point.

On PoV, I disagree with you about the validity of Facebook’s trademark.

But I do actually agree with you that:
> That doesn’t mean that Facebook doesn’t
> have a valid trademark.

I would also point out that it doesn’t mean Facebook DOES have a valid trademark either.

I was pointing out the weakness of trademarks like Mouse, Tire or Chair. Facebook is much closer to this end of the spectrum than to a strongly defensible trademark.

New, original words that are not part of the language (Xerox, Kleenex) are the strongest. Words like Facebook, Windows, Word, Tire, Chair are the weakest.

Anonymous Coward says:

Re: Re: Re:3 Re:

“I would also point out that it doesn’t mean Facebook DOES have a valid trademark either.”

Also absolutely true.

A trademark like mouse, tire, or chair could be extremely strong if used in connection with, for example, perfume or motor oil.

“New, original words that are not part of the language (Xerox, Kleenex) are the strongest. Words like Facebook, Windows, Word, Tire, Chair are the weakest.”

This is oversimplified and misleading.

arbitrary and fanciful words are generally classed together in terms of conceptual strength, such that a preexising work such as mouse might be just as conceptually strong as EXXON if used in connection with something completely unrelated to its dictionary definition.

Moreover, that spectrum ignores market strength. Even a highly descriptive mark (let’s take the bait and say that Facebook is highly descriptive) can be a very strong mark through development of strong secondary meaning in the minds of consumers. IN fact, that is exactly what has happened with the Facebook mark.

Why, pray tell, would a mark with such a strong connection to a single source of social networking services in the minds of the public be invalid?

Matt (profile) says:

Re: Re: Re:

That alone doesn’t, you’re right. We have “facebook” as a generic descriptor for any book provided to a group with pictures and text describing members of the group. That does not mean that it is generic for identifying the source or origin of a website.

But here, the website is an online facebook. The mark was at least descriptive, if not generic, as applied to the website. In order to register it, they needed to demonstrate secondary meaning – and at least arguably they did not have it, yet, at the time of the registration (certainly do now!). The registrar could conclude that the trademark was improvidently granted at the time.

Net effect – zilch. Even if the registrar agreed that the mark was descriptive and without secondary meaning at the time of original registration, it probably has since acquired secondary meaning.

The bottom line, in my view, is that the equitable arguments will not work. The best argument here is no likelihood of confusion, which should prevail.

Ninja (profile) says:

Re: Re: Re: Re:

Sensible reply, thank you for crushing the Trolls while providing arguments. I’m inclined to agree with you that it has the secondary meaning (the COMPANY facebook, the SOCIAL NETWORK Facebook) but the fact that it shouldn’t have been registered to begin with still stands. Not that it should be revoked now (the trademark) but the aggressive trademark stance Facebook adopts cannot be allowed. As pointed out shagbook not only doesn’t resemble Facebook in anyways (and I’ve tried looking at it poetically) but it also engages in different activities.

Oh well, hope Mr Zuckeberg or whatever you write gets it in the face and stops bullying ๐Ÿ˜‰

CommonSense (profile) says:

Re: Re:

Yes, very much so. The website came to my campus during my 3rd year of college. For at least 4 years before I got there, and those three years before the website, every freshman class got a printed “Freshman Facebook” directory, with pictures and campus phone numbers. When the website first started, most thought it would just be a cool update to the old printed model, since it only allowed college students on it, and only limited colleges even participated.

Lord Binky says:

Your name is your description.

Overall I think being able to trademark a phrase that describes itself isn’t quite right. If you never heard of the company facebook before, and you heard someone say facebook, what would come to mind? Maybe… a book of faces? I do not believe you would hear facebook and think “must be a book of feces” because obviously that would be ScatBook.

Although there are terms unlike face book that are ambiguous if you never heard it before. Such as face painting, is it a painting of a face or a painting on a face? But then… I guess face book is ambiguous, it could be a book MADE of a face or a face that looks like a book. What an odd condition that would be. I’d avoid a library in that case.

Anonymous Coward says:

AC :
“Sure. A “facebook” is a book colleges give out to students showing other students.

That doesn’t mean that Facebook doesn’t have a valid trademark.”

hm… for some reason this doesn’t seem to apply fairly to all words.

ex:
Sure. A “motorcycle” is a specific type of two wheeled vehicle.

That doesn’t mean that Motorcycle doesn’t have a valid trademark.

Actually, it does work and I’m going to start trademarking and collecting my trademarked websites names. All I can see is MONEY MONEY MONEY MONEY.

Anonymous Coward says:

Re: Re:

It depends on what the trademark is used on connection with.

If I sell handbags under the MOTORCYCLE trademark, then it makes no difference that the word “motorcycle” was previously used as a generic term for motorcycles.

Facebook is not providing facebooks. It is providing a social networking website.

You follow?

The Truths Razor says:

I belive all Generic names like that should not be allowed, Next they’ll be arguing use of the word “The” is infringement being that they were originally “thefacebook”.
this kind of crap is out of control, just more patent trolls, trying to stifle innovation never mind this is why “facebook” came about. he was frustrated his colleges “facebook” was taking to long to come online on 2004, if anything his college has a case against him. he just took it out of the realm of universities and gave it to the public, that being said they want to be able to help other companies and platforms use there “social networks” API to to give people the power to share and make the world more open and connected. in there own mission statement. So what are we to assume freely use the API, just no part or whole of the name, or is this a ploy to sucker a whole bunch of people into an infringement case where they litigate against all parties for stealing there IP? Facebook has got to stand up and drop the frivolous suits or suffer the aftermath falling by the wayside of grater innovators, less they suffer the fate of myspace…becoming largly unimportaint in the future.

masnick is a parrot says:

masnick is not a lawyer

seriously mike, can you pull a single case where trademark misuse (or any IP misuse claim for that matter) has actually succeeded? equitable estoppel maybe, but the example given above is not even an example falling under the doctrine of IP misuse. go to law school. you might impress blog readers, but to anyone with any legal experience, you sound like an idiot.

Anonymous Coward says:

I don’t know that much about the specific laws in question, nor do I care. I am simply a private citizen who sees an attack over what appears to be a very vague point of interpretation…

I don’t have an issue with Facebook defending the term ‘Facebook’ from being used as part of a legal name. I can understand them getting edgy about someone using a ‘very’ similar term for a very similar product (like calling the new social network ‘Facebank’ or something), but I have a problem with them attacking anyone who touches even part of that word even when those others are neither infringing nor competing.

If this case stands and Facebook can attack anything that has the word ‘Face’ in its name, then that means a LOT of existing companies/products will be coming under the gun. Will their next target be Face, the movie? Or perhaps they’ll go after the FACE foundation or Kiss My Face or About Face Theatre or Face to Face?

And what happens after all those are cut down? do they start attacking companies/products that use the letters “ook” in their works? Or maybe any company whose name starts with an ‘F’? Legal precedent never backs off, it only gets pushed harder.

I realize no one is going to read this but at least I had the opportunity to publicly say my piece, however belatedly. ๐Ÿ™‚

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