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Facebook's Aggressive Trademark Hunt Facebook's Aggressive Trademark Hunt

Facebook's Aggressive Trademark Hunt

by Mark Peters
September 8, 2010

The site's trademark bullying raises questions about who owns words.

Hide your face and your books! That ravenous social monster Facebook is on a trademark hunt. It’s vigorously going after websites—such as Teachbook, a proposed website for teachers—that in any way play on the name of Mark Zuckerberg’s creation. Stories have also spread about Facebook trying to trademark “Face." Whether the networking site is acting reasonably or not, they are certainly making a new name for themselves as a trademark bully.

In their complaint, Facebook accuses Teachbook of “Misappropriating the distinctive BOOK portion of Facebook’s trademark... in a blatant attempt to become Facebook ‘for Teachers.’” Basically, what Facebook fears is that “book” could become a generic term for social networking sites. Generification is something companies always fight like wild hyenas; Google never wants you to “google.” But the idea of the monolithic Facebook fearing this tiny website-in-the-making, which appears focused on sharing lesson plans more than anything else, seems a little ridiculous. Plus, as Edward Lee wrote in The Huffington Post, “The two sites look quite different, and the names themselves indicate affiliation with each other just as much as ‘Kmart’ and ‘Walmart’ do. Of course, no one confuses Kmart for Walmart, or assumes their affiliation, just because they both have ‘mart’ in their names.”

Since trademark law is about as far from my specialty as the moon is from Hoboken, I consulted Jessica Levy, trademark lawyer, who clarifies things considerably. In this case of Teachbook, she thinks Facebook has a pretty good case: “If Teachbook were using its name to identify a source of, for example, teaching guides, I’d say Facebook wouldn’t have a chance. But what Facebook has done is to combine two terms that have common meanings to create a unitary term is something altogether different. Thus, what Facebook has done in a trademark sense is create ‘secondary meaning’ in the term. What happens with a term that has acquired secondary meaning, even if it is a composite of two descriptive elements, is that when a third party adopts one of those descriptive elements for the same, similar, or related goods or services, the public is likely to be confused into believing that the so-called junior user is somehow connected with the so-called senior user. At least that’s what Facebook is arguing. And though I’m often skeptical of aggressive trademark enforcement, this time I believe Facebook may have some strong arguments here.”

So the issue isn’t whether Facebook can own the old-as-hell words “face” or “book.” The issue is the success of this secondary meaning, which Facebook certainly has created by its omnipresence. Levy says, ”In a nutshell, because of the fame associated with the Facebook trademark, Facebook can pass the smell test by arguing that any party trying to use ‘face’ or ‘book’ on a social networking site risks confusing the public into believing its services are sponsored by or affiliated or connected with Facebook.” Face-whatevers and Blah-blah-books in totally different realms are probably safe, but in the social networking realm, Levy advises, "I’d bet on Facebook.”

And yet, even though Facebook may have a case, making that case is not doing anything to dispel their growing rep an Orwellian overlord that yearns to sink its tentacles into every nook, cranny, and baby picture of our lives. I have to agree with Edward Lee that Facebook’s actions betray a “...tin ear to public relations.” As Lee says, “Going after a small website intended to help teachers with lesson plans is just not good PR, no matter how you slice it. The company's aggressiveness...might strike many people as trademark bullying. And if there's one lesson that is true both in trademark and in life: no one likes a bully.” Overzealous trademark protection just makes a corporation look petty and insecure, like when Xerox insists their name is not a verb, or McDonald's tries to keep "McJobs" out of dictionaries.

Trademarks aside, Facebook's follies are starting to outweigh the delights of getting back in touch with that one dude from the ninth grade. I can’t be the only person who feels dangerously close to vomiting when seeing commercials for The Social Network, a.k.a., the Facebook movie. The portentous music makes it sounds as though Zuckerberg invented the stars and the moon, rather than a slightly less annoying version of Friendster and MySpace. Between this absurd aggrandizement, and the endless pokings into our privacy, and now this aggressive trademark business, Facebook feels more and more like the Darth Vader of our time. Where’s Obi-wan and a lava planet when you need ’em?

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