Facebook wins right to police “face-” trademark prefix
ttabvue.uspto.gov
ttabvue.uspto.gov
I filed a number of trademark applications around Think's FACECASH registered trademark just in case Think ended up expanding into other fields. One of them was FACEMAIL. Facebook filed an opposition despite our "settlement" agreement.
Facebook argued that it was confusing. I argued that the market is full of confusion: for example, Apple owns FACETIME, a software product that overlaps completely with Facebook's market. At the hearing, I also pointed out two more "confusing" eight-letter same-four-letter-prefix marks that everyone knows: STAR TREK and STAR WARS. Facebook paid a consultant $120,000 to create a survey that ignored the state of the market and asked people what company they thought made a product called FACEMAIL. Only 36.2% chose Facebook, Inc.
Throughout the multi-year process, Facebook's lawyers refused to respond to typical phone calls and e-mails. I filed a motion for sanctions, which was granted in part here. They also redacted just about everything that suggested I existed, so I filed a motion to counter that, which was also granted in part.
In the end, the Board concluded that the two marks were likely to confuse consumers--completely ignoring the state of the market, and the fact that the increase in digital video technology especially leads to more uses of faces in computing--and argued that because FACEBOOK is famous, and because FACE is an important part of FACEBOOK, Facebook can stop the registration of any FACE- mark that could be argued to be related to anything Facebook does.
I also pointed out that Facebook always uses the same shade of blue and the same font to emphasize its design mark, and that FACEMAIL would not be used in the same manner, so it would not be confusing. One of the judges on the panel countered that I "might" do that in the future, though. So suddenly we were discussing (in a civil context) pre-crime: whether I should be restrained broadly from doing something narrow I specifically planned not to do.
Facebook's internal counsel admitted at the hearing that their standard naming scheme is "FACEBOOK X" where X is some feature, but then made it try to sound like Facebook, Inc. has some features with the FACE- prefix, which it does not. In fact, she was referring to one app on the effectively-defunct Facebook Platform, which is not made by Facebook, Inc.
Thankfully the Board completely ignored Facebook's even-more-draconian argument that FACEMAIL would cause "trademark dilution," a new phenomenon invented by Congress at the behest of enormous corporations. The law is so insane (especially since it was amended) that the Board tries to ignore it out of existence, rarely ruling upon dilution issues.
I pointed out (in writing, in the record, with a printout from harvard.edu and by waving the paper version I had from 2003 at them) that Harvard and other universities have used FACEBOOK for decades, making it a generic term that offers zero protection in the view of the appellate courts. To that, the Board said, "applicant’s argument that 'The Facebook' is the name of an electronic directory of Harvard University students is not supported by any testimony or evidence."
Right.
Might be worth looking over the history between Apple Corps and Apple Computer [1]. Who should have had the trademark there?
[1] http://en.wikipedia.org/wiki/Apple_Corps_v_Apple_Computer
36% were confused by FACEMAIL, and 0% were confused by THINKMAIL.
29% is considered enough to be confusing.
So you're in the 36.2%. Was there another point you were trying to make? (fwiw, I'd be in the 63.8% of that poll).
At some point, and this is why the Star Trek / Star Wars example matters, consumers realize that the prefix is generic within the scope of a given market. Telecommunications and faces overlap a lot these days.
It's just something people do (or at least I do). I think it's maddness to prevent the use of names starting with "Face" because of this confusion. I thought that iPlayer was apple related like iTunes for a long time. It's confusing yes but I don't feel you should be able to prevent someone using a similar sounding name.
When we start making these decisions more heavily on the subjectivity of users more than objectivity (e.g. the colors would be completely different, and if they aren't then a trademark infringement could be filed at that time), then we're just giving the free market to large corporations.
The more popular a brand is, the more likely more people are to associate related names/colors/symbols to that brand. Trademark law simply does not exist for cases like this. It exists to prevent genuine outright infringement.
The link steps through the decisions, and gives case law for the reason. Which step do you disagree with?
EDIT: The link says clearly that a well known mark gets more protection just because it is well known.
But OP wasn't using Facebook, he wasn't using Facebok, he wasn't using Facbook, he wasn't pretending to be Facebook, we wasn't competing with facebook, he wasn't using the colors, the image, or anything related to the brand.
No, he was punished (i.e. the government used force against him to hider his free market ability) for using a name that started with Face. That's simply not a threshold that we, as a society, should accept as protected--no matter the popularity of the brand, no matter the laws a group of 435 people influenced heavily by corporations have managed to actually pass.
Besides that, the ruling is by it's very nature a subjective decision. I disagree with their subjective decision.
"Lawyers are a waste of money"
and
"Lawyers are an enormous waste of money and in most circumstances a drain on society."
But you also say:
"No one, on this forum or otherwise, is in any position to evaluate whether or not someone else truly might need a lawyer. Every case tends to be full of nuance."
Why the absolute statement as well as the contradiction if in fact you believe that "No one, on this forum or otherwise, is in any position to evaluate whether or not someone else truly might need a lawyer."
In my case, you have a history with the plaintiff/opposer, some part of which is confidential, someone who just spent a year as a fellow at Stanford Law School, and who has worked with probably thirty lawyers on various cases, including several trademark cases in the past.
I got a motion for sanctions against Facebook's lawyers granted in part, as well as a motion reversing their redaction choices. Granted, I didn't win, but I might not have expected to going in, and it shows at the very least that I'm not your average pro se plaintiff.
Yes, good lawyers are valuable and cannot be underestimated. But let's not be fooled to think that some C student lawyer who limped though the Bar is any more capable than someone with passion and intellect devoted to a specific case or issue.
Thanks for the response.
People are quoting the 36%, but do we know what the other two 3rds said?
And Facebook does have video features.
I doubt if you tried to register Facezombies or Faceballs that they would have a complaint, but considering that Facebook DOES have email, and they ARE a technology company...
It's ridiculous to assume consumers would be so confused because of a generic prefix. It would only be an issue if someone tried to pass themselves off as facebook, but then they'd be actively trying to deceive consumers.
E-mail addresses as usernames helps but good lord it's nearly impossible to think of a username it's come to the point where I bet you could mash your keyboard with your fist and still come up with something already taken.
This is why we cannot have nice things.
Facebook aren't asking to police all uses of Face*, they asked to stop a specific trademark for a single product.
All your link shows is a trademark holder protecting their trademark. Some of those will win, some will lose.
It sucks that the legal system requires trademark holders to do that. But it's not Facebook's fault.
You propose to create an identical product (messaging) distributed through identical channels (the Internet) to a similar audience as the existing Facebook sub-product. You propose to call that product Facemail, even though the existing competitor Facebook is very big and very well known.
Despite what some people here are saying, and counter to the title, quoting from the link:
> In this regard, we note that opposer is not, as applicant argues, claiming the exclusive right to use the word “Face” or for that matter the word “Book”; rather, opposer claims the exclusive right to use the mark FACEBOOK in connection with social networking services, including email and instant messaging services.
But still a go on SnapFace.
There was a brief dispute we had with Zynga who wanted us to change the name of CupidWithFriends (http://techcrunch.com/2013/05/17/with-friends-joke-goes-here...). That went away, but they are legally required to try and enforce the trademark or they lose the right.