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Facebook wins right to police “face-” trademark prefix

75 pointsby thinkcompalmost 12 years ago

21 comments

thinkcompalmost 12 years ago
By way of explanation...<p>I filed a number of trademark applications around Think&#x27;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 &quot;settlement&quot; agreement.<p>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&#x27;s market. At the hearing, I also pointed out two more &quot;confusing&quot; 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.<p>Throughout the multi-year process, Facebook&#x27;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.<p>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.<p>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 &quot;might&quot; 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.<p>Facebook&#x27;s internal counsel admitted at the hearing that their standard naming scheme is &quot;FACEBOOK X&quot; 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.<p>Thankfully the Board completely ignored Facebook&#x27;s even-more-draconian argument that FACEMAIL would cause &quot;trademark dilution,&quot; 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.<p>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, &quot;applicant’s argument that &#x27;The Facebook&#x27; is the name of an electronic directory of Harvard University students is not supported by any testimony or evidence.&quot;<p>Right.
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WestCoastJustinalmost 12 years ago
Wonder how this affects Apple&#x27;s <i>face</i>time?
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alistonalmost 12 years ago
Having just gone through my own trademark hoopla, I&#x27;m convinced that trademark examiners might as well be throwing darts at a dartboard. The decisions are so arbitrary that there ends up being essentially no established precedent for a lot of critical questions -- &quot;acquired distinctiveness&quot; &quot;descriptive&quot; etc. ultimately mean &quot;how deep are your pockets&quot; and &quot;how many times are you willing to appeal.&quot;
_dark_matter_almost 12 years ago
Don&#x27;t have me for this, but it seems that &quot;Facemail&quot; is actually a little confusing for consumers. It isn&#x27;t all that surprising.<p>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...
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dpcanalmost 12 years ago
Human beings only have so much time before all common names, names for things in general, are used up and trademarked. A brick wall in &quot;naming stuff&quot; WILL be hit sooner than later.
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codereflectionalmost 12 years ago
So if some skater makes a site of skaters faceplanting, a phrase that&#x27;s been around forever, Facebook is going to come down on them.<p>This is why we cannot have nice things.
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hyborg787almost 12 years ago
&quot;Facebook wins right to police “face-” trademark prefix&quot; is a misleading headline.
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3stripealmost 12 years ago
Facepalm
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DanBCalmost 12 years ago
I genuinely don&#x27;t know what you were expecting.<p>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.<p>Despite what some people here are saying, and counter to the title, quoting from the link:<p>&gt; <i>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.</i>
wnevetsalmost 12 years ago
facefucking is now trademarked by facebook?
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balanonalmost 12 years ago
There go my ideas: FaceStarter, FaceBnB, FaceBox, Face37Signals.<p>But still a go on SnapFace.
mikemokaalmost 12 years ago
And now corporations try to steal common words from people, even the word &quot;Face&quot;, it will be interesting to see how hackers groups will react to this.
arb99almost 12 years ago
Wait till they trademark their blue colour like these <a href="http://www.businessinsider.com/colors-that-are-trademarked-2012-9?op=1" rel="nofollow">http:&#x2F;&#x2F;www.businessinsider.com&#x2F;colors-that-are-trademarked-2...</a> ...
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ferdoalmost 12 years ago
Next up, they&#x27;ll go after anything with &#x27;book&#x27; in the name.
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shaunxcodealmost 12 years ago
Thank goodness they aren&#x27;t going after the -face suffix or the IT Crowd would be in trouble with friend-face.
Apocryphonalmost 12 years ago
Does Facebook even have any products or features with the &quot;face-&quot; prefix?
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austinlalmost 12 years ago
Could you imagine if they also won the right to &quot;Insta-&quot; as well?
dudurochaalmost 12 years ago
That&#x27;s similar to Zynga trademarking &quot;with friends&quot;, right?
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akadienalmost 12 years ago
:facepalm:
dramalmost 12 years ago
Try renaming it gfacemail and hiring 50 Cent as a partner.
Ackleyalmost 12 years ago
wow... next you will be able to trademark letters
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