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Facebook wins right to police “face-” trademark prefix
- Apocryphon 13y agoDoes Facebook even have any products or features with the "face-" prefix?
- thinkcomp 13y agoExcluding Facebook, no.
- 3stripe 13y agoFacepalm
- 1st1 13y ago(tm)
- thinkcomp 13y agoBy way of explanation... I filed a number of trademark applications around Think's FACECASH registered trademark just in case Think ended up expanding into other fields. One of them was FACEMAIL. Facebook filed an opposition despite our "settlement" agreement. Facebook argued that it was confusing. I argued that the market is full of confusion: for example, Apple owns FACETIME, a software product that overlaps completely with Facebook's market. At the hearing, I also pointed out two more "confusing" eight-letter same-four-letter-prefix marks that everyone knows: STAR TREK and STAR WARS. Facebook paid a consultant $120,000 to create a survey that ignored the state of the market and asked people what company they thought made a product called FACEMAIL. Only 36.2% chose Facebook, Inc. Throughout the multi-year process, Facebook's lawyers refused to respond to typical phone calls and e-mails. I filed a motion for sanctions, which was granted in part here. They also redacted just about everything that suggested I existed, so I filed a motion to counter that, which was also granted in part. In the end, the Board concluded that the two marks were likely to confuse consumers--completely ignoring the state of the market, and the fact that the increase in digital video technology especially leads to more uses of faces in computing--and argued that because FACEBOOK is famous, and because FACE is an important part of FACEBOOK, Facebook can stop the registration of any FACE- mark that could be argued to be related to anything Facebook does. I also pointed out that Facebook always uses the same shade of blue and the same font to emphasize its design mark, and that FACEMAIL would not be used in the same manner, so it would not be confusing. One of the judges on the panel countered that I "might" do that in the future, though. So suddenly we were discussing (in a civil context) pre-crime: whether I should be restrained broadly from doing something narrow I specifically planned not to do. Facebook's internal counsel admitted at the hearing that their standard naming scheme is "FACEBOOK X" where X is some feature, but then made it try to sound like Facebook, Inc. has some features with the FACE- prefix, which it does not. In fact, she was referring to one app on the effectively-defunct Facebook Platform, which is not made by Facebook, Inc. Thankfully the Board completely ignored Facebook's even-more-draconian argument that FACEMAIL would cause "trademark dilution," a new phenomenon invented by Congress at the behest of enormous corporations. The law is so insane (especially since it was amended) that the Board tries to ignore it out of existence, rarely ruling upon dilution issues. I pointed out (in writing, in the record, with a printout from harvard.edu and by waving the paper version I had from 2003 at them) that Harvard and other universities have used FACEBOOK for decades, making it a generic term that offers zero protection in the view of the appellate courts. To that, the Board said, "applicant’s argument that 'The Facebook' is the name of an electronic directory of Harvard University students is not supported by any testimony or evidence." Right.
- shrughes 13y agoI would expect a product named Facemail to be something created by Facebook.
- willchilcutt 13y agoSo did a third of other random people surveyed. You would not be in the majority apparently, and after seeing a logo or web page you would hopefully be able to figure out it is not created by Facebook.
- shrughes 13y agoIt doesn't matter whether it's a majority. A third of people is a large proportion.
- amirmc 13y agoSo what's your point? Does this mean Facebook has some right to the 'face-' prefix? I strongly disagree. Might be worth looking over the history between Apple Corps and Apple Computer [1]. Who should have had the trademark there? [1] http://en.wikipedia.org/wiki/Apple_Corps_v_Apple_Computer http://en.wikipedia.org/wiki/Apple_Corps_v_Apple_Computer
- toomuchtodo 13y agoThere is only so much stupid you can engineer around, technically and legally.
- DanBC 13y agoIf 20% said Apple, and 20% said Google, and 10% said YouTube, and the rest said "don't know" then a majority did think it was Facebook.
- aaronbrethorst 13y agohttp://en.wikipedia.org/wiki/Plurality_(voting) http://en.wikipedia.org/wiki/Plurality_(voting)
- WestCoastJustin 13y agoWonder how this affects Apple's facetime?
- arb99 13y agoI've actually talked to people about facetime and they've assumed I was talking about some video feature on facebook. People do get confused by it. Facebook is so big anything that starts with Face is just assumed to be related to facebook by some people.
- darkarmani 13y agoIt's product confusion that matters. Facebook doesn't have video, so it shouldn't matter. Facebook doesn't really have email, so i'm not sure how they claim it is confusing. No one says, "go sign up for email on facemail, oh i mean facebook."
- DanBC 13y agoIn this case there is Facebook (huge, very well known) and someone else (not so huge, not so well known) so it seems obvious to me that there's a chance for confusion. People are quoting the 36%, but do we know what the other two 3rds said?
- jasonlotito 13y agoExcept there are news articles about Facebook's email, as referenced in the report.
- thinkcomp 13y agoIncorrect on two counts. It's the international classification code overlap that matters, and likelihood of confusion, not product confusion. There could be no actual confusion here because the FACEMAIL trademark was filed on an intent-to-use basis. And Facebook does have video features. https://www.facebook.com/videocalling/ https://www.facebook.com/videocalling/
- qq66 13y ago
- codereflection 13y agoSo if some skater makes a site of skaters faceplanting, a phrase that's been around forever, Facebook is going to come down on them. This is why we cannot have nice things.
- _dark_matter_ 13y agoDon't have me for this, but it seems that "Facemail" is actually a little confusing for consumers. It isn't all that surprising. I doubt if you tried to register Facezombies or Faceballs that they would have a complaint, but considering that Facebook DOES have email, and they ARE a technology company...
- amirmc 13y agoNot really. Apparently only a third of people who were polled thought that 'Facemail' would be something from Facebook, Inc. [1] It's ridiculous to assume consumers would be so confused because of a generic prefix. It would only be an issue if someone tried to pass themselves off as facebook, but then they'd be actively trying to deceive consumers. [1] https://news.ycombinator.com/item?id=6092837 https://news.ycombinator.com/item?id=6092837
- cglace 13y agoMore confusing than facetime?
- darkarmani 13y agoFacebook has an email address, but I wouldn't call it email. Isn't it all just in-app messages? Can you send email from facebook?
- rlpb 13y agoNot RFC2821/RFC2822 email, but it is a form of email as far as the public are concerned. The term "email" doesn't necessarily have to mean Internet email that is compatible with other Internet email systems, even if you might wish it to.
- dpcan 13y agoHuman beings only have so much time before all common names, names for things in general, are used up and trademarked. A brick wall in "naming stuff" WILL be hit sooner than later.
- cheald 13y agoPsh. That's what Unicode is for.
- deleted 13y ago[deleted]
- dhughes 13y agoA lot of my usernames for forums, social sites were made a decade ago, others I was just lucky to get but trying to think up email usernames for my parents is infuriating I had to give up and go back to it a few days later. E-mail addresses as usernames helps but good lord it's nearly impossible to think of a username it's come to the point where I bet you could mash your keyboard with your fist and still come up with something already taken.
- hyborg787 13y ago"Facebook wins right to police “face-” trademark prefix" is a misleading headline.
- vog 13y agoCare to explain?
- hyborg787 13y agoThe end of the report says something along the lines that Facebook can expect to win an opposition if the Face* thing can be argued to be related to something Facebook actually does and if there's a significant portion of a survey that associates it with Facebook (30% is not low). So Faceplanting is fine, but Facetalk, Facemail, Facefriends, Facephotos are probably things Facebook can oppose and win if they haven't been trademarked yet.
- DanBC 13y agoThey won because the products (messaging) are identical, the customers (people over 13) are the same, the distribution channels (the Internet) are the same, and because Facebook has a huge recognition in the social media sector (matched in the survey only by Twitter) and many many users (despite the fact that people can sign up for more than one account). Facebook aren't asking to police all uses of Face*, they asked to stop a specific trademark for a single product.
- thinkcomp 13y agoNo, just all uses of FACE- and -BOOK on the internet. http://ttabvue.uspto.gov/ttabvue/v?pnam=Facebook,%20Inc http://ttabvue.uspto.gov/ttabvue/v?pnam=Facebook,%20Inc.
- DanBC 13y agoBut you lost because the product was identical (messaging) in the same area (social networking). All your link shows is a trademark holder protecting their trademark. Some of those will win, some will lose. It sucks that the legal system requires trademark holders to do that. But it's not Facebook's fault.
- aliston 13y agoHaving just gone through my own trademark hoopla, I'm convinced that trademark examiners might as well be throwing darts at a dartboard. The decisions are so arbitrary that there ends up being essentially no established precedent for a lot of critical questions -- "acquired distinctiveness" "descriptive" etc. ultimately mean "how deep are your pockets" and "how many times are you willing to appeal."
- wnevets 13y agofacefucking is now trademarked by facebook?
- balanon 13y agoThere go my ideas: FaceStarter, FaceBnB, FaceBox, Face37Signals. But still a go on SnapFace.
- ferdo 13y agoNext up, they'll go after anything with 'book' in the name.
- benburleson 13y agoThey don't already?
- kmfrk 13y agoNo, that's Amazon.
- dudurocha 13y agoThat's similar to Zynga trademarking "with friends", right?
- jmtame 13y agoYes, there is -- which is why I can empathize with Aaron on this one. It feels a lot like being bullied when a company makes the dilution argument. There was a brief dispute we had with Zynga who wanted us to change the name of CupidWithFriends (http://techcrunch.com/2013/05/17/with-friends-joke-goes-here/ http://techcrunch.com/2013/05/17/with-friends-joke-goes-here...). That went away, but they are legally required to try and enforce the trademark or they lose the right.
- deleted 13y ago[deleted]
- mikemoka 13y agoAnd now corporations try to steal common words from people, even the word "Face", it will be interesting to see how hackers groups will react to this.
- arb99 13y agoWait till they trademark their blue colour like these http://www.businessinsider.com/colors-that-are-trademarked-2012-9?op=1 http://www.businessinsider.com/colors-that-are-trademarked-2... ...
- darkarmani 13y agoWait till you try to sell that blue colour in facepaint.
- epmatsw 13y agoIn all fairness, when you mentioned corporate colors, I immediately thought of 3 of the companies on that list (Home Depot, John Deere, and UPS). And I can also see how using Texas and Burnt Orange together could be an issue. Caterpillar is also fairly distinctive, and I don't think it's unreasonable to for them to attempt to limit competitors' production of yellow construction equipment.
- johnward 13y agoBut caterpillar and john deere compete in the same market and have a similar shade of yellow...
- deleted 13y ago[deleted]
- shaunxcode 13y agoThank goodness they aren't going after the -face suffix or the IT Crowd would be in trouble with friend-face.
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- deleted 13y ago[deleted]
- dram 13y agoTry renaming it gfacemail and hiring 50 Cent as a partner.
- deleted 13y ago[deleted]
- akadien 13y ago:facepalm:
- austinl 13y agoCould you imagine if they also won the right to "Insta-" as well?
- DanBC 13y agoI genuinely don't know what you were expecting. You propose to create an identical product (messaging) distributed through identical channels (the Internet) to a similar audience as the existing Facebook sub-product. You propose to call that product Facemail, even though the existing competitor Facebook is very big and very well known. Despite what some people here are saying, and counter to the title, quoting from the link: > In this regard, we note that opposer is not, as applicant argues, claiming the exclusive right to use the word “Face” or for that matter the word “Book”; rather, opposer claims the exclusive right to use the mark FACEBOOK in connection with social networking services, including email and instant messaging services.
- Ackley 13y agowow... next you will be able to trademark letters
- johnward 13y agoLike iPhone and iPad? Didn't Apple try to enforce the "i" trademark. How did that end up?