Facebook Sues Teachbook Over Trademark Concerns; Where's Legalbook?

from the generic-plus-book dept

Thu, Aug 26th 2010 11:44am — Mike Masnick

OG was the first of a whole bunch of you to send in the story of social networking giant Facebook suing the tiny Teachbook site, which apparently only has two employees and hasn't even launched yet. The concern, of course, is with the whole "book" ending. Even though Facebook took its name from the very commonly used "facebook" name given to the collections of photos handed out to incoming students at many colleges, it now feels that its name has become more closely connected with social networking. And it's afraid that anyone else using "book" as a suffix for a social networking site could lead to its own name being considered generic.

"The 'book' component of the Facebook mark has no descriptive meaning and is arbitrary and highly distinctive in the context of online communities and networking Web sites," the complaint explains. "If others could freely use 'generic plus BOOK' marks for online networking services targeted to that particular generic category of individuals, the suffix 'book' could become a generic term for 'online community/networking services' or 'social networking services.' That would dilute the distinctiveness of the Facebook marks, impairing their ability to function as unique and distinctive identifiers of Facebook's goods and services."

This isn't quite to the level (as some people are claiming) of Facebook claiming to own the word "book," but it does seem like a stretch. It's one of the many problems seen with the gradual broadening of trademark law to include such concepts as "dilution," rather than sticking to the basic "likelihood of confusion," standard. Whining about companies copying the suffix of your name seems pretty excessive. The tech world is littered with examples of certain prefixes and suffixes suddenly becoming popular among a number of companies after one becomes successful -- and it's never been a real problem for the original brand. Think of how many companies ended in "-ster" after "Napster," and how many companies copied Flickr in ending with an "r" and a dropped vowel.

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Filed Under: book, social networks, trademark
Companies: facebook, teachbook

28 Comments

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Alan Gerow (profile), 26 Aug 2010 @ 12:06pm

"Where's Legalbook?"

I know this was a joke, but the lawyer version is called "Casebook".
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- KnownHuman (profile), 26 Aug 2010 @ 12:50pm
  
  Re:
  That's awesome.
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John Doe, 26 Aug 2010 @ 12:10pm

Invalidate their trademark?
If Facebook got their name from a pre-existing item that is similar in nature, though physical and not digital, then I would think there would be a good case to get their trademark invalidated.

Of course you have to have the money to fight it so he who has the gold makes the rules.
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- Anonymous Coward, 26 Aug 2010 @ 12:31pm
  
  Re: Invalidate their trademark?
  But Facebook's services aren't just an electronic versino of a facebook.
  
  Bottom line is when you say Facebook, people know what company you're talking about, so it's serving the source-identified function that is key to trademarks.
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  - TtfnJohn (profile), 26 Aug 2010 @ 12:41pm
    
    Re: Re: Invalidate their trademark?
    So I'm supposed to confuse Teachbook for Facebook or Redbook or BoodOfTheDeadBook?
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    - Anonymous Coward, 26 Aug 2010 @ 12:44pm
      
      Re: Re: Re: Invalidate their trademark?
      I'm not saying there's a likelihood of confusion, just that Facebook is a valid trademark.
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  - John Doe, 26 Aug 2010 @ 12:41pm
    
    Re: Re: Invalidate their trademark?
    I haven't been to college in a few years and don't remember any such book when I was. But if Facebook.com took the physical Face Book's name and they perform anywhere close to a similar function, than their trademark could very well be in jeopardy if the physical Face Book wanted to make an issue of it. Remember, you can't operate in a similar line of business and it seems Facebook.com started out very similar.
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    - Anonymous Coward, 26 Aug 2010 @ 12:46pm
      
      Re: Re: Re: Invalidate their trademark?
      A "face book" or "facebook" is a generic term for a book (or some other printed document) that shows your classmates, not a trademark for use with such items.
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      - John Doe, 26 Aug 2010 @ 12:53pm
        
        Re: Re: Re: Re: Invalidate their trademark?
        So can you trademark a term that is already in common use or is this an abuse of trademark law?
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        Anonymous Coward, 26 Aug 2010 @ 1:03pm
        
        Re: Re: Re: Re: Re: Invalidate their trademark?
        Sure, it just depends on what you use if for. "Apple" is a totally valid trademark for computers and such, but not for apples.
        
        Basically, the closer the relation between the mark and the product/service, the weaker the mark, ranging from generic terms that cannot serve as trademarks ("Apple" for apples), to descriptive terms that can only serve as trademarks if you show they have come to be associated with the proprietor (e.g., "Crispy" for apples), suggestive marks that only vaguely suggest something about the products/services (e.g., "nature-ripe" or something for apples), to fanciful/arbitrary terms that have nothing to do with the goods/services (e.g., "trout" or "zakbor" for apples).
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    - Anonymous Coward, 27 Aug 2010 @ 7:39am
      
      Re: Re: Re: Invalidate their trademark?
      We received a book with the pictures, names, interests and hometowns of all of our freshman class during matriculation. We all called it the stalker pages, but I'm pretty sure it was actually called the freshman face book.
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ddd, 26 Aug 2010 @ 12:10pm

Facebook
Redbook?
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jsl4980 (profile), 26 Aug 2010 @ 12:14pm

What about "...soft"
Clearly by this standard Microsoft should be able to sue every company with "soft" in their name. You might get confused between them and every other software company, and every soft serve ice cream shop... mmm mint chocolate Windows.
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- Anonymous Coward, 26 Aug 2010 @ 12:33pm
  
  Re: What about "...soft"
  A bit different though, because Micro"soft" provides "soft"ware (and other things). but Face"book" doesn't provide "books," and neither do the other social networking sites (to my knowledge).
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  - Anonymous Coward, 26 Aug 2010 @ 2:45pm
    
    Re: Re: What about "...soft"
    What about Office?
    
    Like, Microsoft Office vs Open Office?
    
    Neither of them provide office supplies but do provide the same type of product.
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cc (profile), 26 Aug 2010 @ 12:31pm

"Think of how many companies ended in "-ster" after "Napster," and how many companies copied Flickr in ending with an "r" and a dropped vowel."

I think you forgot THE example: iThingies
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Erika Whiteway, 26 Aug 2010 @ 12:41pm

Facebook v. Teachbook
'Wired' magazine did this exact thing back in the day--early '90's--to 'Womenswire', the first online community for women. 'Wired' enjoined from using the word 'wire' in their name, as it was 'too similar to 'wired'..as far as I recall, Womenswire could not afford the legal expense and costs of renaming the business so it was cutdown before it even launched. Way to go, Wired...how is it 'Wired' has not enjoined the rest of the world--hardware stores, RadioShack, PG$E--from using the word 'wire' itself?
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mjb5406 (profile), 26 Aug 2010 @ 1:28pm

So...`
does this now mean that students will be carrying textcollectionofpgesboundtogetherintoavolume?
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Anonymous Coward, 26 Aug 2010 @ 1:46pm

Hmmmm, I would like to see youTube sue redTube. It'd be good to have a clear winner in something where at least the "little guy" as it were had enough money to make it worth the fight.

Both are "Tube" != "Video" sites which is similar to the "book" ~= "social networking" argument.
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Ray Trygstad (profile), 26 Aug 2010 @ 2:34pm

WordPerfect used to do this all the time.
Back when they were their own company and not owned by someone else, WordPerfect used to sue anyone using "perfect" in their business name and having any conceivable connection to a computer or using words. As I recall it got pretty ludicrous but like many of these cases, the deep pocket will nearly always beat common sense, because it just costs too much money to defend against these types of ridiculous claims.
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Simple Mind (profile), 26 Aug 2010 @ 3:00pm

oh noes
Social book club site Bookbook.com is in big trouble!
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Richard Black, 26 Aug 2010 @ 3:18pm

Facebook the bully
Just another case of the big guy bullying the small guy. Its crap but they will probably get away with it like Tandy forcing AutoShack to change their name to AutoZone because they own the word shack from RadioShack.

Pure BS. They think nobody can tell the differnce between a Comsumer Electronic store and an Auto Parts store.

I guess Glass stores can't sell windows anymore because that belongs to Microsoft.
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Real Hoot, 26 Aug 2010 @ 4:27pm

What about f#ckbook.com
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Anonymous Coward, 26 Aug 2010 @ 5:53pm

I wonder if coke ever sued pepsi with this reasoning; both being cola.
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Jeremy Lyman (profile), 27 Aug 2010 @ 4:24am

Not done yet.
Any credence to the reports that say they're also trying to control the trademark for "face{something}"? Seems like they could run up against stiffer (or at least bigger) opposition on that one. Would losing the battle for their prefix weaken their argument for the suffix?
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Shawn (profile), 27 Aug 2010 @ 8:35am

you could say this is a failbook huh? I am surprised that site hasn't been reported on yet if they really feel this way.
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Randall (profile), 27 Aug 2010 @ 9:30am

YouTube?
Why aren't the YouTube attorneys going after XTube for trademark infringement? Seems like a strong case of dilution to me.
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John Smith, 30 Aug 2010 @ 10:53am

www.telephonebook.com
www.phonebook.com
www.plantsbook.com
www.animalbook.com
www.boysbook.com
www.girlsbook.com
www.sexbook.com
www.gaybook.com
www.lesbobook.com
www.murderbook.com

Should I continue?

Even the most notorious words with book.com appended to it exist as web address. (www.f***book.com, www.h***ybook.com, etc.)

What does facebook complain about?
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