Could Facebook Lose Its 'Facebook' Trademark After Being Too Aggressive In Trademark Bullying?
from the lamebook dept
We've talked in the past about Facebook's rather aggressive trademark theories, under which it appears to believe that any website that starts with "face" or ends with "book" somehow violates its trademarks. This is pretty excessive and I have trouble seeing how it meets the likelihood of confusion test in most cases. While it has filed some lawsuits, it's also directly opposing trademark filings at the USPTO. For example, it is currently arguing that the website Shagbook cannot trademark its name.Shagbook has filed its response to the opposition, which you can read below, but it hits back pretty hard, noting a few key points:
- Facebook should never have been allowed to trademark "Facebook."
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.
- Facebook is engaging in trademark misuse and trademark bullying for anticompetitive reasons:
Opposer’s opposition should be denied under the equitable doctrine of unclean hands. Opposer has engaged in trademark misuse and trademark bullying by abusively using oppositions, litigation, and threats of the same to maintain a competitive market advantage. For these reasons as well as those outlined in Applicant’s counterclaims below, the opposition should be denied.
- There's no likelihood of confusion, especially since Shagbook is a dating site, and Facebook has explicitly said it is not:
There is no likelihood of confusion between Applicant’s proposed mark and the mark cited by Opposer even reading the description of Applicant’s services broadly. Alternatively, Applicant is only using the mark in connection with its online dating related services, and as such, there is no likelihood of confusion with respect to the actual services provided by Applicant as Opposer does not provide online dating services.
- Not only is 'Facebook' generic, the company itself has used it in a generic manner:
In addition to numerous uses by third parties, Opposer has actually used the term “facebook” in a generic sense, and is estopped from now claiming that it is not generic.
