5 ms·

FiftyThree Files Trademark For “Paper”

53 points by austenallred 13y ago

funkiee 13y ago
I know Facebook using the name without communicating first feels wrong, but this is just petty and won't succeed.
untog 13y ago
Oh. See, yesterday I thought they were being quite civil and just getting some free publicity from the whole thing. But today...
- stackcollision 13y ago
  There's no such thing as 'civil' when it comes to business, especially not when you're dealing with millions of dollars. When most business people (SV companies included) shake your hand they're holding a knife behind their back in the other.
jcutrell 13y ago
I'd be interested to see how FiftyThree proves damages in this case, and whether or not the judge will make a call for the punitive damages. I definitely think that there's no doubt about it: the FiftyThree Paper sales will certainly take a hit, and the brand is diluted hugely, especially for those who haven't encountered it yet. This was obviously a conversation that Facebook had, and chose to do it anyway - not sure exactly what the result of the conversation was internally, but it almost certainly had to have some phrase like "well, if they sue us, we can handle it."
- loceng 13y ago
  Any comment relating to "Oh, I first thought Facebook acquired Paper by FiftyThree" could be used as proof that it's causing brand/name dilution, etc..
- deleted 13y ago
  [deleted]
bogardon 13y ago
Good luck, seriously. There's 0 reason for facebook to care.
harlanlewis 13y ago
Leaving aside the debate over trademarking common words, it's surprising FiftyThree hadn't already trademarked their product names. They charge a premium price for well-branded products - trademarking those names should have happened as a matter of course.
- harlanlewis 13y ago
  ...just read TFA, looks like they did do some trademarkin: > FiftyThree’s only trademark in the USPTO was for “Paper by FiftyThree”.
ar7hur 13y ago
Come on, 53. That whole story is the best thing that can happen to you. Publicity.
- Tyrannosaurs 13y ago
  A company who've raised $15m in funding isn't looking for the sort of publicity you get among people who talk about tech company Trademark cases most of whom knew about them anyway. If the whole thing was mainstream maybe but this isn't really publicity for them, not in any meaningful sense.
rayiner 13y ago
1) Trademark rights are generally effective from date of use in commerce, not the date of filing. 2) Filing for registration isn't the same as filing an infringement claim. 3) The phrase "trademark for/on [some word]" is meaningless. Trademarks only exist for a word or name in the context of some class of product. "Lucky" brand jeans is a different mark than "Lucky" Strike bowling.
dylandrop 13y ago
Is this really the best usage of your funding cash? Seems like half of 53's $15M can go down the drain with this sort of thing. I sort of expect FB Paper to flop like the Facebook phone OS thing; if I were 53 I wouldn't be going so ballistic over this. Best case, they get the trademark and Facebook whittles down all of their funding in order for them to get it. Better for them to just move on and recognize that their product and Facebook's are different enough and it's not worth having the SEO from people searching the word "paper" to go into an expensive legal battle.
- rubyrescue 13y ago
  it costs about $1000-$2000
  - malandrew 13y ago
    Yeah, filing a trademark doesn't cost that much in the grand scheme of things, especially when you've built up as much brand equity around the name as 53 has. A lawsuit on the other hand would burn through cash, but IANAL so I don't know if the damages they could extract from Facebook would be worth it. Maybe being in a lawsuit against goliath would make the lawsuit pay for itself as free advertising, since I reckon journalists will enjoy writing about such a case.
- slg 13y ago
  If there goal is to make money and let's be honest, that is the goal of most start-ups, is this really a bad plan? It seems like it is a high risk/high reward proposition that most people on here love. Sure the odds Facebook's Paper being a success aren't sky high. Same with the chance of Facebook agreeing to a licensing agreement on the name. But when you compare the potential income from that to a fancy iPad app and stylus, it seems clear that litigation route might be the better use of VC funds. And that is the problem with the current legal environment.
  - blueblob 13y ago
    I don't think they expect Facebook to license the name; I think they don't want to dilute their name. EDIT: Interestingly enough for me, I found it kind of repulsive that King.com trademarked "Candy" but I don't find this repulsive (I guess because either I am a hypocrite, or because "Paper" is their entire product name).
MrWhargarbl 13y ago
Why were people so up in arms over King's attempt to trademark "Candy", but suddenly it's OK to trademark "Paper"?!?
- sp332 13y ago
  King used their trademarks to attack smaller players. FiftyThree is using theirs to defend against a larger player. Also, King has trademarked "Candy" across a lot of areas where they don't even have products. The application for "Paper" seems more specific.
  - jeremygeros 13y ago
    FiftyThree also sort of did the same thing to a smaller player as well http://figure53.com/notes/2014-02-04-david-and-goliath/ http://figure53.com/notes/2014-02-04-david-and-goliath/
    - hoopism 13y ago
      There's a link on HN but it didn't do very well... odd. Upvote it back on the mainpage... looks like a bad title buried it. https://news.ycombinator.com/item?id=7179241 https://news.ycombinator.com/item?id=7179241
- rebel 13y ago
  I agree with you wholeheartedly. If you don't want someone else to use your product name, don't use one of the most common English nouns in the dictionary.
- sejje 13y ago
  Put simply: people side with the little guy.
kristofferR 13y ago
It's good that Facebook finally gets a taste of their own medicine (they've sued other sites for using Book in their name).
- huangc10 13y ago
  well come on. How much is Facebook worth vs. how much is "53 Paper" worth?
kin 13y ago
Honestly, I think this was a defensive move in case FB decided to trademark 'Paper'.
antr 13y ago
After reading this I kind of regret buying Paper's (FiftyThree) digital pencils/brushes/etc. A drawing app wanting to kill the use of that word in other industry verticals... i think "trademark troll" is now a real thing
- jimwalsh 13y ago
  So you should be able to start a computer manufacturer and call it Apple?
  - antr 13y ago
    No. I should be able to start a magazine and call it Apple. Facebook isn't launching a drawing app nor FiftyThree a social network.
    - jimwalsh 13y ago
      But both are competing in the the same place, the app store, over the same thing, your attention and money.
      - antr 13y ago
        That's an absurd argument. You are saying Kayak.com is competing directly against kayak (boat) retailers on Google because they have the same name. I'm sorry but that "competing" argument is pure speculation, borderline bs.
- mintplant 13y ago
  Or, perhaps, they want to defend themselves in case Facebook makes a move against them regarding their brand name.
aerialcombat 13y ago
What losers
gfodor 13y ago
This whole thing is so stupid because it's pretty evident that Facebook is going to just turn the real app into Paper if the metrics look good, and the working name "Paper" is going to probably be abandoned. It seems they decided to launch the thing as a separate app to get feedback before completely overhauling the Facebook experience on iOS. Of course, Facebook can't admit to this, so FiftyThree is off in a corner freaking out.
ynniv 13y ago
They need to if they're going to be serious about keeping the name "Paper" with no mention of 53. To me it seems an absurd goal because it will be very expensive and has no substantive benefit for the product, But if having a single word generic mark on their application is desired they need to get out there and defend it. They will probably need to pursue "Papers By mekentosj.com" and other similarly named products to be successful.
jrockway 13y ago
That should go well. Just today I was taking notes on a product that clearly stole their brand: a piece of loose leaf notebook paper.
jordsmi 13y ago
If you don't want someone to eventually use the same name as you, you shouldn't use something so generic. I'm sure they weren't the first, and won't be the last, person to use "paper".
rajacombinator 13y ago
why didn't they do this before? I guess they figure they can't get a trademark on a word like "Paper" and now they're just filing it to grab some headlines?

53 points by austenallred 13y ago

I know Facebook using the name without communicating first feels wrong, but this is just petty and won't succeed.

untog 13y ago

Oh. See, yesterday I thought they were being quite civil and just getting some free publicity from the whole thing. But today...

stackcollision 13y ago
There's no such thing as 'civil' when it comes to business, especially not when you're dealing with millions of dollars. When most business people (SV companies included) shake your hand they're holding a knife behind their back in the other.

jcutrell 13y ago

I'd be interested to see how FiftyThree proves damages in this case, and whether or not the judge will make a call for the punitive damages. I definitely think that there's no doubt about it: the FiftyThree Paper sales will certainly take a hit, and the brand is diluted hugely, especially for those who haven't encountered it yet. This was obviously a conversation that Facebook had, and chose to do it anyway - not sure exactly what the result of the conversation was internally, but it almost certainly had to have some phrase like "well, if they sue us, we can handle it."

loceng 13y ago
Any comment relating to "Oh, I first thought Facebook acquired Paper by FiftyThree" could be used as proof that it's causing brand/name dilution, etc..
deleted 13y ago
[deleted]

bogardon 13y ago

Good luck, seriously. There's 0 reason for facebook to care.

harlanlewis 13y ago

Leaving aside the debate over trademarking common words, it's surprising FiftyThree hadn't already trademarked their product names. They charge a premium price for well-branded products - trademarking those names should have happened as a matter of course.

harlanlewis 13y ago
...just read TFA, looks like they did do some trademarkin: > FiftyThree’s only trademark in the USPTO was for “Paper by FiftyThree”.

ar7hur 13y ago

Come on, 53. That whole story is the best thing that can happen to you. Publicity.

Tyrannosaurs 13y ago
A company who've raised $15m in funding isn't looking for the sort of publicity you get among people who talk about tech company Trademark cases most of whom knew about them anyway. If the whole thing was mainstream maybe but this isn't really publicity for them, not in any meaningful sense.

rayiner 13y ago

1) Trademark rights are generally effective from date of use in commerce, not the date of filing. 2) Filing for registration isn't the same as filing an infringement claim. 3) The phrase "trademark for/on [some word]" is meaningless. Trademarks only exist for a word or name in the context of some class of product. "Lucky" brand jeans is a different mark than "Lucky" Strike bowling.

dylandrop 13y ago

Is this really the best usage of your funding cash? Seems like half of 53's $15M can go down the drain with this sort of thing. I sort of expect FB Paper to flop like the Facebook phone OS thing; if I were 53 I wouldn't be going so ballistic over this. Best case, they get the trademark and Facebook whittles down all of their funding in order for them to get it. Better for them to just move on and recognize that their product and Facebook's are different enough and it's not worth having the SEO from people searching the word "paper" to go into an expensive legal battle.

rubyrescue 13y ago
it costs about $1000-$2000
- malandrew 13y ago
  Yeah, filing a trademark doesn't cost that much in the grand scheme of things, especially when you've built up as much brand equity around the name as 53 has. A lawsuit on the other hand would burn through cash, but IANAL so I don't know if the damages they could extract from Facebook would be worth it. Maybe being in a lawsuit against goliath would make the lawsuit pay for itself as free advertising, since I reckon journalists will enjoy writing about such a case.
slg 13y ago
If there goal is to make money and let's be honest, that is the goal of most start-ups, is this really a bad plan? It seems like it is a high risk/high reward proposition that most people on here love. Sure the odds Facebook's Paper being a success aren't sky high. Same with the chance of Facebook agreeing to a licensing agreement on the name. But when you compare the potential income from that to a fancy iPad app and stylus, it seems clear that litigation route might be the better use of VC funds. And that is the problem with the current legal environment.
- blueblob 13y ago
  I don't think they expect Facebook to license the name; I think they don't want to dilute their name. EDIT: Interestingly enough for me, I found it kind of repulsive that King.com trademarked "Candy" but I don't find this repulsive (I guess because either I am a hypocrite, or because "Paper" is their entire product name).

MrWhargarbl 13y ago

Why were people so up in arms over King's attempt to trademark "Candy", but suddenly it's OK to trademark "Paper"?!?

sp332 13y ago
King used their trademarks to attack smaller players. FiftyThree is using theirs to defend against a larger player. Also, King has trademarked "Candy" across a lot of areas where they don't even have products. The application for "Paper" seems more specific.
- jeremygeros 13y ago
  FiftyThree also sort of did the same thing to a smaller player as well http://figure53.com/notes/2014-02-04-david-and-goliath/ http://figure53.com/notes/2014-02-04-david-and-goliath/
  - hoopism 13y ago
    There's a link on HN but it didn't do very well... odd. Upvote it back on the mainpage... looks like a bad title buried it. https://news.ycombinator.com/item?id=7179241 https://news.ycombinator.com/item?id=7179241
rebel 13y ago
I agree with you wholeheartedly. If you don't want someone else to use your product name, don't use one of the most common English nouns in the dictionary.
sejje 13y ago
Put simply: people side with the little guy.

kristofferR 13y ago

It's good that Facebook finally gets a taste of their own medicine (they've sued other sites for using Book in their name).

huangc10 13y ago
well come on. How much is Facebook worth vs. how much is "53 Paper" worth?

kin 13y ago

Honestly, I think this was a defensive move in case FB decided to trademark 'Paper'.

antr 13y ago

After reading this I kind of regret buying Paper's (FiftyThree) digital pencils/brushes/etc. A drawing app wanting to kill the use of that word in other industry verticals... i think "trademark troll" is now a real thing

jimwalsh 13y ago
So you should be able to start a computer manufacturer and call it Apple?
- antr 13y ago
  No. I should be able to start a magazine and call it Apple. Facebook isn't launching a drawing app nor FiftyThree a social network.
  - jimwalsh 13y ago
    But both are competing in the the same place, the app store, over the same thing, your attention and money.
    - antr 13y ago
      That's an absurd argument. You are saying Kayak.com is competing directly against kayak (boat) retailers on Google because they have the same name. I'm sorry but that "competing" argument is pure speculation, borderline bs.
mintplant 13y ago
Or, perhaps, they want to defend themselves in case Facebook makes a move against them regarding their brand name.

aerialcombat 13y ago

What losers

gfodor 13y ago

This whole thing is so stupid because it's pretty evident that Facebook is going to just turn the real app into Paper if the metrics look good, and the working name "Paper" is going to probably be abandoned. It seems they decided to launch the thing as a separate app to get feedback before completely overhauling the Facebook experience on iOS. Of course, Facebook can't admit to this, so FiftyThree is off in a corner freaking out.

ynniv 13y ago

They need to if they're going to be serious about keeping the name "Paper" with no mention of 53. To me it seems an absurd goal because it will be very expensive and has no substantive benefit for the product, But if having a single word generic mark on their application is desired they need to get out there and defend it. They will probably need to pursue "Papers By mekentosj.com" and other similarly named products to be successful.

jrockway 13y ago

That should go well. Just today I was taking notes on a product that clearly stole their brand: a piece of loose leaf notebook paper.

jordsmi 13y ago

If you don't want someone to eventually use the same name as you, you shouldn't use something so generic. I'm sure they weren't the first, and won't be the last, person to use "paper".

rajacombinator 13y ago

why didn't they do this before? I guess they figure they can't get a trademark on a word like "Paper" and now they're just filing it to grab some headlines?