A letter from Paper (FiftyThree) to Paper (Facebook)
news.fiftythree.com
news.fiftythree.com
"Facebook Paper" is an alternative interface to Facebook.
"Paper by FiftyThree" is a drawing application.
Other than that they are both software, there's little room for confusion. 53 can get upset and write a blog post about it, but there is no substantive damage done. They'll probably sell more of their own product because of this.
If it continues it might be funny for 53 to release Paper Facebook.
Also, it is very unlikely that Facebook is attempting to benefit from 53's brand. Facebook wanted to call their product something descriptive, and the names collided. Compare this to any name involving "Facebook", which likely is attempting to benefit. Outside of a directly competing service, it's unlikely that the name of a product would include the word "Facebook". This makes "Facebook" less generic and more enforceable than "Paper".
Yes, Facebook WAS generic. They would have had a difficult time enforcing their brand from the start. Once a brand becomes a household name (which is admittedly a vague metric), the rules are different. See Apple, Windows, Sun, Sharp, Digital.
And I am going to name it SnapYouTwitFace.
That said, I don't think 53 can claim any exclusive rights to the name, and I'm happy to see they haven't - they have just asked with exquisite politeness.
If I took ten people off the street, in San Francisco itself, and asked them who made an iPhone app called "Paper" a majority would probably already tell me Facebook. Perhaps one of them would know of 53, and probably not by name. Being in the mobile software community, we know of a lot of "successful mobile apps" that are not household names. I like and use 53's Paper, but 53 is not Exxon, GE, or Facebook. My friends and family have almost certainly never heard of it. A hundred million unverified global downloads does not equal a hundred million people who remember what your poorly branded, generically named app is called. I usually think of it as "that coffee stain icon with a generic name". Honestly, 53 might do better renaming it "53". Or "Studio 53" if they wanted to skim off of another brand that probably won't fight back.
Paper by FiftyThree is a good product, but a poor choice of name, and I still can't figure out why their app icon says "53" instead of "Paper".
That said, I don't think 53 can claim any exclusive rights to the name, and I'm happy to see they haven't - they have just asked with exquisite politeness.
No. 53 needs to claim exclusivity, claim that there is no possibility of confusion, or live with the reality that if people start calling Facebook Paper just "Paper", that Facebook will legally be able to prevent 53 from using the term. With trademarks it doesn't matter who has been using it longer, only who successfully enforces it.
I imagine their plan has always been to enjoy the use Paper as long as they can, and rebrand when they can't anymore.
That's a false trichotomy; the second and third branches are the opposite of how trademark law works. Please see my top-level comment for more details.
Keep in mind that 53 would almost certainly demand a jury trial, as (IIRC) would be their constitutional right. Jurors tend to favor the little guy; that's especially true if the little guy's lawyers can convince the jury that the big guy behaved badly or even just negligently --- and plaintiffs' trial lawyers can be extremely skilled at doing just that. Under the Seventh Amendment to the U.S. Constitution, which governs civil (non-criminal) cases, a jury's findings of fact cannot be overturned unless the judge (or an appellate court) finds that no reasonable jury could have made those findings on the basis of the evidence of record.
I imagine there are more than a few plaintiffs' lawyers with suitable expertise who would be thrilled to take 53's case on a contingent-fee basis -- not least because they'd get a lot of publicity for doing so.
One not-unlikely outcome: 53 changes its product name, and Facebook pays 53 a significant amount of money, perhaps as an investment.
"If I took ten people off the street, in San Francisco
itself, and asked them who made an iPhone app called
"Paper" a majority would probably already tell me
Facebook."
Furthermore, Facebook also has an app called Messenger and Camera•. They've been around awhile and I'd be surprised if you surveyed people that they would be able to tell you that Facebook makes either. For both, I would expect people to tell you that those are actually the generic name for any phone's build in messenging app and camera app, respectively.
TBH, I really which we'd move to a trademark system that makes all dictionary words untrademarkable. You should have to come up with an original name if you want protection and if you want the generic name you should be able to use it knowing full well that you will have no protection when doing so. Companies should not just be allowed to highjack single words like Paper, Camera, Messenger, Candy, Saga, etc. etc. etc.
Paper (53) is a drawing app, Paper (FB) is a news/FB wall magazine. Completely different markets. They should be able to co-exist.
As for Apple Computer and Apple Corps, obviously Apple never tried to be a Record label company. But when it started moving its operations into the music industry (i imagine that was the itunes time?) it got attacked by Apple corps. Before that it was peaceful co-existence. After that, it was Apple computer paying Apple Corps to keep its mouth shut and not bitch about it
Perhaps you should try bringing to market a product called "Coca-Cola by Ynniv" and you can find out for yourself how this really works.
The Coca leaf isn't used anymore due to the prohibition of cocaine.
Randomish link from a quick search: http://dish.andrewsullivan.com/2012/02/25/coca-cola-is-still...
I don't know where you're getting this idea from, every article I've seen has had a fine time just referring to the app as 'Paper'. All the marketing material is clearly just referring to this as 'Paper', I strongly strongly doubt Facebook want's anyone to refer to the app as 'Facebook Paper'. And I certainly don't think it's too generic, I saw the original 'Paper' app being referred to as 'Paper' just fine before Facebook came out with an identically named app.
Should we expect an upcoming blog post from 53 complaining that Crayola has released a new product entitled "Pencil"?
If you want to protect your name, use a protectable name. If you're going to use an entirely generic name then deal with it... wait hang on... Dunder Mifflin just called... they want their name back too.
Cool company, great products, daft blog post.
(1) Contradictory made "Paper" (2) 53 made "Paper by 53", with the same function as "Paper" (just a lot better) (3) Facebook made "Paper - stories from Facebook"
You're certainly free to disagree or feel all the sympathy you want to for Facebook here, but I don't think most people would see it the same way.
If only. The entire post is to (a) differentiate their Paper from the FB Paper and (b) make an effort to protect what little trademark they have.
They're making it public so everyone can know "We exist, we were here first, please don't let FB steamroll us."
If they didn't do this, in six months FB lawyers would send a cease-and-desist telling them to stop using Facebook's trademark "Paper."
If they make enough stink they can maintain their brand. If they don't, then the 800-lbs Facebook gorilla will take away their brand identity.
This is it exactly. Copyright and trademark are not the same thing, but many people confuse them. You have it right: With trademark the burden is on FiftyThree to defend it. The fact that they are doing that so politely makes me like them more.
Look at all the publicity, they are on Reddit, news sites, twitter, HN... I've never heard of them until today, and I imagine I'm, not alone.
So, when a big gorilla company uses the name of your well known (and with your use it already known to them) application / webpage that you've worked for years on, I wish you a good luck "trying to ride this publicity gravy train".
The media loves David v. Goliath stories and being cast as David could have profound marketing opportunities for 53. Kudos to 53 for having the sense to handle this gracefully.
53 was granted a US Trademark on the phrase 'Paper by FiftyThree' on December 2013 for trademark categories 21 23 26 36 38 and it appears international category 9 with a first-used-in-commerce claim of March 2013.
53 are obligated to enforce their mark in those categories otherwise they risk losing it. This is the same reason Facebook goes after anything with 'face or book' that even vaguely seems similar. If they don't they risk losing the Facebook mark.
The law sides with the trademark holder as long as they enforce the mark.
As many people have mentioned, 'Paper' is generic and 53 didn't get the word 'Paper' by itself. It was granted the mark 'Paper by FiftyThree'. Since Facebook's app isn't called 'Paper by Facebook' this leaves some wiggle room if FB wants to challenge the claim if it heads to court. Facebook has deep pockets and good lawyers, so perhaps they've already calculated the risk and is willing to fight in court. 53 may not be able to afford that fight (cash or distraction wise).
TL;DR: 53 is obligated to enforce their Trademark and the letter to Facebook is a manifestation of that obligation. Unfortunately their mark isn't just on the word 'paper' so it will be interesting to see if this fades away or the parties head to court.
But the open letter is not. A simple C&D would have protected them; publishing it is purely about marketing.
This is a big social faux paus on Facebook's part - at least among the developer community - but I really don't see either company changing their Paper's name. I imagine it'll go similarly to Google's Go name collision[1].
How should the little guy in these situations be legally protected? On one hand it's clear that "candy" shouldn't be trademarked, but "paper" is just as generic a term. Maybe the lesson here is not to name your product generic nouns and avoid the trouble all together.
Did it not turn out to be a legal issue because there was ultimately little commercial interest behind the Go![1] language?
Apple Computer had to pay Apple Corps, even though it seemed like the computer industry had little to do with the music industry at the time[2], so it is confusing how the conflict can be ignored until it goes away.
[1] https://en.wikipedia.org/wiki/Go!_%28programming_language%29
[2] https://en.wikipedia.org/wiki/Apple_Corps_v._Apple_Computer
http://articles.latimes.com/2010/aug/25/business/la-fi-0826-...
Their brand name really manages to confuse me whenever it’s mentioned … but that just comes with the territory of picking something so generic.
So, yes, there is a question what someone is referring to when they talk about Square in the context of an app. That happened to me several times already, here on HN. I read some headline with Square in it, click on it and am confused why it’s not about website hosting.
I have little doubt that it is possible to build an extremely successful brand that no one confuses with anything else around a very generic term (just think of Apple), but if you want that super-generic word to work out for you (and those words can be cool to use, no doubt) you have to live with people confusing you until you pull it off. It’s a trade-off.
521 - paper
1991 - match
2723 - apple
2777 - square
2921 - target
Source (could probably use something more legitimate): http://www.englishclub.com/vocabulary/common-words-5000.htm
There are over 2,000 records that include various forms of the word "target". Over 3,000 for "apple". Over 3,000 for "windows".
If you use a common word in a trademark you may be able to prevent others from using it for the exact same (or very similar) product, but you don't own the word outright.
Facebook might well be okay with a camera app called Target (though they might not be -- someone else may be using it for that purpose already). They would definitely be in trouble if they started a department store called "Facebook Target", though.
Yep , And to add more salt to wounds, I hate such diplomatic "Oh Shit! Did you guys existed too ? We just did not know answers".
(A) that the mark PAPER is protectable for what 53 sells -- and I think that's highly likely; PAPER in this context strikes me as a "suggestive" and therefore protectable mark [1]; and
(B) that 53 was the first user of the mark; and
(C) that there's a "likelihood of confusion" about the origin, sponsorship, or endorsement of the companies' products or services -- this entails looking at seven or eight factual questions, namely the "strength" of the mark; the proximity of the goods; the similarity of the marks in appearance and/or sound; any evidence of actual confusion; similarity in marketing channels used; the type of goods and the degree of care likely to be exercised by the purchaser the junior user's intent in selecting the mark; and the likelihood of expansion of the respective product lines [2].
In that situation, as the junior user, Facebook would (or should) be liable for infringement.
Another point: 53 can be damaged by "reverse confusion," namely people thinking that 53 is the one that's ripping off Facebook [3].
[1] http://tmep.uspto.gov/RDMS/detail/manual/TMEP/Oct2012/TMEP-1...
[2] http://en.wikipedia.org/wiki/Trademark_infringement
[3] http://definitions.uslegal.com/r/reverse-confusion-trademark...
This line tells the whole story. This isn't just the case of a large company perhaps not noticing another product in the digital space with the same name. This is very deliberate, and the CEO comes across as flabbergasted with Facebook's decision.
There are TWO billion-dollar storage companies with Box in the name. Now that's confusing.
I did work on a project once where most of the contributors referred to Google Drive as their dropbox, as well.
"So we're building this great new experience, and we want to call it Paper..."
"Isn't there already an incredibly popular mobile application called Paper?"
"So?"
Some variant of this conversation must have happened, right? It's not like nobody at Facebook has heard of 53 - how did this name ever get out the door?
It seems like most of us here on HN think of 53's Paper when we think of 'app called Paper' - perhaps this isn't the case in the overall consumer market (but then again, Paper - 53's, that is - was once featured prominently on Apple.com - not just the app store, but the main website) - but to me at least, it feels like Facebook is using a name which is 'already taken'.
It seems Facebook simply doesn't care. FiftyThree's complaint will blow over in a few days.
However, FiftyThree is signing up plenty of new users from the story. They're probably genuinely upset but this won't be their death and it might even be a good thing. I'd never heard of Paper beforehand.
Choosing an already in use word for any new publicly accessible thing complicates the global namespace a little more than it already is, but if it is the name you really wish to give it, sometimes a little distributed parsing overhead is better than the alternatives - trademarking "paper" or calling your product "Payper" instead.
FB being the first $1 trillion company seems inevitable. FB is the borg of all borgs.
You can't mention or search for them without barfing out the company name, and sometimes a specific property alongside to be unambiguous about your meaning. It makes finding discussions and blog posts harder because people don't have a common language for these poorly-named things.
It just seems like these companies are shooting themselves in the foot. Is natural word-of-mouth growth no longer a concern?
[1]: http://reactjs.com/
Which app would you download from the appstore ?
I seriously doubt that 53 was the first company that used Paper in the name.
This seems much more like manufactured controversy for free press than anything else.
Anyhow, what's the name of that FB Android app that turns your phone's desktop into a FB desktop? Or was it iOS app? What exactly was it anyway? FB OS?
Don't worry Paper53, PaperFB is probably another fluke, a quick yet clumsy response to Medium's menacing growth, to the wall's irrelevance, to the teens running away....
As far as international usage, that's a different story.
MS can trademark Windows in conjunction with computer interfaces, but not if they decide to make windows that go in houses. That's where the common usage trademark issue arises. Also, if like kerosene the word becomes common usage then the trademark can be revoked.
The law is nuanced, there is no blanket ban on trademarking words in common usage.
Facebook has already "gone live" with the Paper name—I think it's too late to change it. Whether it's malicious (are they "building their story" off FiftyThree's work?) or not ("Oops") is almost irrelevant here.
It seems to me that both FB and 53 applied the same degree of thought.
IMHO, I find it absurd that private companies want to make common words their own. Couldn't the "degree of thought" 53 put into their naming process led them to think that "paper" was an extremely generic word and this conflict was bound to happen?
Either Facebook released this as a project their engineers did to test out interfaces or they are collecting data from this app about what is shared and what content is viewed to improve their own feed algorithms.
Paper by FiftyThree (FiftyThree, Inc.)
Paper - stories from Facebook (Facebook, Inc.)
Another distinction to keep in mind is FiftyThree's Paper is iPad only and Facebook's is iPhone only (although it will install on iPad).
Yes it may cause confusion, but they should have used unique names for their products if they wanted the differentiation.
That should do it ;)
Lesson to self, avoid generic names.
I really like 53's Paper app, but I wouldn't like it any less if it were called Doodlepad, DrawPaper etc.