The UK online dating site Shagbook has applied for a trademark with the United States Patent and Trademark Office (USPTO) — and if there were a “dislike” button available, Facebook would’ve clicked it.
Since there’s no such button, Facebook followed the usual procedure of filing an opposition, a proceeding in which one party, who “believes that he will be damaged by the registration of a mark,” seeks to block registration of another’s mark.
Facebook contends that Shagbook’s mark infringes on its trademark because the dating site’s name is too similar in “appearance, sound meaning, and commercial impression” and that the name was chosen with “the intent to call to mind and create a likelihood of confusion . . . and/or trade off the fame of Facebook.”
But Shagbook isn’t backing down, and in fact, has called Facebook’s own trademark into question in its response (PDF), averring that the term never should have been granted trademark protection in the first place as a “generic term”:
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.
Shagbook also avers that Facebook has used its trademark in a generic way and that there is no likelihood of confusion between the two sites as one is explicitly a dating site and the other is explicitly not. One thing that Shagbook fails to address in its claims is that a mark that begins as generally descriptive (think “California Pizza Kitchen”) can become registrable on the primary register through “secondary meaning.” That is, if a business can show that its mark, which would otherwise be generally descriptive, is now associated by a significant portion of the relevant market with that business’s goods or services, then the mark becomes registrable and protected by federal trademark law. It seems fairly certain that Facebook can carry this burden—which do you think of when you hear the work “Facebook:” a bound, paper set of classmates’ pictures from this year’s incoming class at Harvard, or a website with more than half a billion users?
Shagbook also contends that Facebook “has engaged in trademark misuse and trademark bullying by abusively using oppositions, litigation, and threats of the same to maintain a competitive market advantage.” One example of this might be Facebook’s registration of the word “face” in certain contexts—a move that raised some eyebrows on the faces (®?) of many in the intellectual property community.
You may remember that we discussed Facebook’s lawsuit against Lamebook for trademark infringement last November.
What do you think about Facebook’s attempts to enforce and extend its trademark protection?