(Thank you to Thomas Yarnell for contributing to this post.)
It’s one thing for Facebook to claim that a website called “Teachbook” infringes upon the “Facebook” trademark. That seems reasonable. But what about when the social network seeks to trademark both the words “FACE” and “BOOK”?
Last week, Facebook took a big step toward securing the first half of its name, as the company received a Notice of Allowance from the US Patent and Trademark Office for the word “FACE”. Unless something extraordinary happens between now and the pending issuance, soon Facebook will own a registered United States trademark to the word “FACE”.
To be clear, Facebook’s exclusivity is limited to its defined field, namely:
telecommunication services, namely, providing online chat rooms and electronic bulletin boards for transmission of messages among computer users in the field of general interest and concerning social and entertainment subject matter, none primarily featuring or relating to motoring or to cars.
So, on the one hand, exclusivity is narrow. And this is important, because while Apple Computers owns trademarks for “Apple”, those are limited to computer and electronic products. Apple can’t shut down my local courier service (Apple Courier), or the Big Apple Circus. But it can – and did – get into an ugly, decades-long spiff with Apple Records over who could and could not use the trademark “APPLE” in connection with the music business, most recently involving Apple Computer’s foray into iTunes.
But I digress. Ownership of the word “FACE” soon will belong to Facebook nonetheless. Gizmodo downplays the hysteria – urging “don’t panic” – by noting that “it isn’t particularly unusual for a company to hold trademarks on common words like this. Hell, Apple has “Chicago” trademarked – when talking about computer fonts.”
The real point is an association of the common term (like “FACE”) with the common source of the product or service, which is the essence of trademark protection. It took Facebook 5+ years to convince the PTO to allow the registration. There were a number of reasons for that, including an original application filed by another party that was ultimately acquired by Facebook, and some convoluted procedural history on the application. Facebook would also have to have overcome an initial reluctance about granting trademark protection to a term that – otherwise – is generic, descriptive or common.
Noone would argue that “FACE” is not a common term. What Facebook would have argued is that by sustained national and then global usage over a period of years, the term had acquired a “secondary meaning” in the eyes of consumers. Perhaps not so when it came to tennis racquets or the music industry or construction equipment, but certainly when it came to social media networks.
The next question is whether competitor products – Apple again comes to mind with its recent video chat application “Facetime” – would fall within the Facebook litigation crosshairs. The narrow question would depend on whether Facetime infringed upon “providing online chat rooms and electronic bulletin boards for transmission of messages among computer users”. My quick guess is probably not, if only because to the extent “Facetime” becomes solely associated with iPhones and an Apple product, there’s little real market confusion as to the source of the product or service.
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