-Wes Anderson, Attorney
One might assume that Facebook, the ubiquitous social media platform that aggregates and analyzes nearly 1 billion users‘ data, would know every nook and cranny of the USPTO trademark database. Apparently, that’s not quite the case.
Various news outlets have reported recently that a Vermont startup named Designbook has received the demand letter nasty-gram from Facebook (no reference to Facebook property Instagram intended) regarding its name. Designbook styles itself as a “peer to peer marketplace for emerging businesses” that allows entrepreneurs to collaborate with new team members and — more importantly — investors.
Designbook already went to the trouble of filing no less than fifteen trademark applications in late 2014 for various iterations of their core trademark, including DESIGNBOOK, DESIGNBOOK.COM, and the Designbook logo:
As an initial matter, Facebook certainly cannot consider this to be a run-of-the-mill trademark infringement case, which depends on likelihood of consumer confusion. While Designbook offers some modicum of social networking through its “collaboration” platform, the differences between its niche services and Facebook’s, along with the differences in the marks themselves, suggest that consumers can still readily differentiate between two “-BOOK” marks online. Facebook hasn’t had too much luck fending off other “-BOOK” marks, even when they are used for discussing Facebook itself. What’s more, Designbook’s cofounder Aaron Pollak had a real zinger of a quote for Boston Magazine:
“What about a phonebook? What about a yearbook? What about a notebook or a scrapbook? All of those things have the name ‘book’ in them and the truth is, a lot of those things is an aggregation of profiles.”
It’s far more likely that Facebook will rely upon “dilution by blurring,” a more expansive way to protect “famous” marks I previously discussed in relation to the late <walmart.horse> (RIP). And indeed, Facebook has filed two batches of oppositions against the DESIGNBOOK and the DESIGNBOOK.COM marks alleging both traditional likelihood of confusion and dilution by blurring (you can follow the action for each batch here and here, respectively). This requires marshaling a greater amount of evidence, so it remains to be seen how resolute Facebook will be here.
What’s truly interesting from a trademark counsel standpoint is that, while Facebook filed these oppositions, they only cover seven of Designbook’s applications. Three of Designbook’s other applications have already gone past the opposition deadline and have received notices of allowance. So DESIGNBOOK in Class 36, DESIGNBOOK.COM in Class 36, and DESIGNBOOK.COM in Class 35 each escaped the opposition guillotine. If Facebook’s goal is to keep the Principal Register clear of “-BOOK” marks, then one wonders why these weren’t included in the opposition (indeed, the DESIGNBOOK application for the identical Class 35 services is among those opposed).
A typical trademark “watch” keeps an eye out for trademarks that may contain key terms or otherwise resemble a brand owner’s trademark. It typically comes in one of two forms: one type watches for newly-filed applications (that may be several months away from being eligible for an opposition, if they ever get that far), and another type watches for applications that will be “published,” that is, approved by the PTO and eligible for a third-party challenge. The culprit might be that the three lucky applications published slightly sooner than the others. But any standard trademark watch package would have put brand counsel on notice many months before the opposition deadline, suggesting that Facebook may have been asleep at the wheel, missing its chance to oppose these marks as well.
Perhaps letting those three applications go this was a deliberate decision by Facebook’s trademark counsel, but otherwise it’s a surprising oversight for a company of Facebook’s size and technological savvy.