“Face” and “Book”: Two Words (Trademark) That Are Becoming Synonymous with Two Other Words: “Law and Suit”
Facebook has sued over trademark disputes several times with the subject trademark being such words as, “face” and “book.”
- Facebook has been and continues to be involved in many interesting lawsuits over trademarks.
- A petition to cancel was filed against Facebook over the use of the word “book.”
- It appears a private resolution was arrived at.
Facebook is of course a trademark but what about words they use, for example, “like.”
Other companies use the word “book”
Other than its lawsuit with FacePorn, Facebook is embroiled in several other interesting trademark infringement lawsuits. The social network site has also gone after companies that have “book” in their name.
Talkbook files a petition to cancel Facebook’s trademark
But what is an interesting change of pace is that a much smaller company called Talkbook has turned the tables on Facebook, by filing a preemptive “petition for cancellation” to the USPTO trial and appeal board, claiming that the social network’s trademark on “The Facebook,” was fraudulent because it dropped the “The” from the trademark. Accordingly, the current status of Facebook’s trademark for “Facebook,” now states that “a cancellation proceeding is pending at the Trademark Trial and Appeal Board.”
Facebook of course has issued a comment stating, “We believe this complaint is completely without merit and we will fight it vigorously.”
Other interesting trademark lawsuits involving Facebook
Facebook is also engaged in trademark infringement lawsuits with parody site Lamebook, and aggressively pursued litigation against Teachbook and Placebook in an effort to protect its identity.
Like Talkbook, Lamebook (a hilarious advertising-supported site that lets Facebook users submit funny status updates, pictures, etc. originating from Facebook), has sued Facebook over trademark infringement and actually won on the grounds that it is a parody site.
Can parodies overcome a claim of infringement?
Lamebook was launched in April of 2009 by two Austin, Texas based graphic designers (Jonathan Standefer and Matthew Genitempo), and was clearly ‘inspired’ by Facebook’s branding when it comes to its name, logo and color scheme.
So is this trademark infringement? The complaint is for a declaratory judgment, which means Facebook threatened to sue Lamebook over trademark infringement, and now the tiny company sued them first in order to get a preemptive decision from the court that there is, in fact, no wrongdoing. With a mind toward litigation strategy, Lamebook likely did this to keep the lawsuit in Texas.
According to the complaint, Facebook counsel first contacted Lamebook in March 2010, and demanded them to cease and desist using the Lamebook mark and change the name and look of its website.
Lamebook’s counterargument is that its site is a clear parody to Facebook and as such does not infringe or dilute the Facebook mark, and enjoys protection under the First Amendment of the US Constitution and in 2011 they won.
Face and Book, two words that are becoming synonymous with two other words: “law” and “suit.”
You may not be Facebook or Lamebook but you likely have a trademark that needs protection. Whether you want to file a trademark registration or you are involved in a dispute over a trademark, if you want to protect your businesses most valuable asset, you will want to consult with a trademark attorney who can protect your rights.
Contact an attorney with Veritas Business Law, LLC for a free consultation.
