Facebook Trademark Dispute

Aaron Greenspan, a former classmate of Facebook founder Mark Zuckerberg filed a petition to cancel Facebook’s trademark registration.

Greenspan, 25, argues Zuckerberg, 23, had no right to trademark the Facebook name in 2005 because the term had been used generically for decades at Harvard University, where they first met. What is more, Greenspan maintains he used the term “Face Book” as part of an online service called houseSYSTEM a few months before Zuckerberg unveiled his now-famous Web site in 2004. (source)

Ron Coleman analyzes the case:

[I]t does seem that there are bona fide trademark questions here. It does seem a stretch, though, to argue that because “facebook” is a generic term for a facebook — which it certainly was as far back as the medieval period, when I went to college — that it cannot be distinctive (or certainly have acquired distinctiveness) as a term for a social networking website.(source)

I have to agree with Coleman. “Facebook” possibly shouldn’t have been granted a trademark registration under section 1(a) of the trademark act. This seems more like a descriptive term that would have been registered under section 2(f).

I did a little digging of my own into this, and it seems that Facebook has some pretty bad trademark karma. They have filed oppositions to registrations for DATEBOOK, FACEPLACE@ORU, DWC FACES, BLACKFACES, and FACEMAIL. It appears that only BLACKFACES decided to stand and fight. Given the thin files on these cases (they all seemed to give up without a fight), I can’t fully analyze Facebook’s legal claims. Nevertheless, opposing these marks based on the FACEBOOK trademark makes it seem like Facebook is under the mistaken understanding that trademarks are “word patents.”

My prediction, Facebook will successfully fend off the cancellations proceeding by Greenspan, but BLACKFACES will kick Facebook’s ass.

3 Responses to Facebook Trademark Dispute

  1. SHG says:

    My recollection was that the more commonly used term was “pigbook”, but perhaps that was in a less gender-sensitive time.

  2. Zac Papantoniou says:

    Randazza, have you seen the reason Greenspan gave for filing his suit?

    Greenspan acknowledged he might be willing to drop his petition for the right amount of money. But he said what he really wants is the legal right to use the term Facebook in the title of a 335-page “memoir” that he plans to self-publish later this month.

    He intends to call the book, “Authoritas: One Student’s Harvard Admissions and the Founding of the Facebook Era.” But Web sites wouldn’t let Greenspan advertise the book under that title because of Facebook’s trademark, prompting him to fight for the rights to the name.

    http://www.businessweek.com/ap/financialnews/D902JTFO0.htm

    Couldn’t Greenspan’s use for the title of (and in) his book fall under fair use of the “FaceBook” trademark? I know that fir use is a defense to infringement, but

    As I understand it, fair use in trademark law protects, first, descriptive uses of ordinary English language words and phrases, even if they are also used as trademarks. In Zatarains v. Oak Grove Smokehouse using the term “fish-fry” to describe a product used to bread fish did not infringe a trademarked term “fish-fri”, and in Sunmark v. Ocean Spray Cranberries describing a cranberry drink as “sweet-tart” did not infringe the trademark for the candy “SweeTarts.” Sometimes called “statutory” protection or “descriptive” protection; several courts have held that it is a vital free expression doctrine, preventing the basic phrases and commonplace expressions of ordinary language from appropriation by individual businesses or organizations. Using that argument, if the term “face book” has been used for as long as both of you gentleman have indicated (sorry, not a lot of time to investigate on my own, so I’m taking your words for it, damn law school exams), it would appear that Greenspan’s right to use the “FaceBook” trademarked name in his book, his use would fall under the statutory/descriptive exception, wouldn’t it?

    Also, looking at it from the angle of “nominative” fair use; fair use protects an individual’s right to use a trademark to specifically refer to the trademarked good or service. Since this exception allows speakers/authors to criticize, comment upon, compare, and even satirize companies, products, and advertising slogans.

    The trademarked identifier “FaceBook” should be able to be used in the nominative aspect as well, as long as Greenspan is not trying to show confusion or otherwise act in bad faith, the use should be protected.

    So why the lawsuit???

    -Zac Papantoniou

  3. Zac Papantoniou says:

    oops, change “fir” to “fair” and add some “…” after but and I look like a law student fully capable of typing sentences on a laptop key board….

    Zac “Two-Finger Typer” Papantoniou

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