Facebook says it owns "book", suing startups using [generic]book.tld(latimes.com)
latimes.com
Facebook says it owns "book", suing startups using [generic]book.tld
http://www.latimes.com/business/la-fi-0826-facebook-suit-20100825,0,2104101,print.story
27 comments
In fact, part of their success ironically is because of the generic nature of their name.
How so?
When is comes to trademarks, there's really no such thing as an intrinsically generic term. A term can only be generic as it relates to a good or service. So the term "facebook" is generic as it relates to "a reference book or electronic directory made up of individuals' photographs and names," but not necessarily as it relates to other things, like the modern social network. Under the framework we use in the U.S., "facebook" is probably a suggestive mark as it relates to social networks, which means that it deserves instant and relatively strong protection.
I've described the framework here: http://notmylawyer.com/post/248307917/choosing-a-valid-trade...
I've described the framework here: http://notmylawyer.com/post/248307917/choosing-a-valid-trade...
In all fairness it seems like they're trying to say that they own [generic]book.tld in the context of social networks. Teachbook.com sounds like it's a social network for Teachers and is possibly using its name to say "Hey, we're like the Facebook of teachers". It's be like if we decided that Hacker News needed a social network and decided to call it Hackerbook.com
Not sure I agree with Facebook's actions here, but they're hardly saying what the headline claims.
Not sure I agree with Facebook's actions here, but they're hardly saying what the headline claims.
If GodTube.com, a religion-centric video site can exist, then so can TeachBook. I don't see how any company can own generic words when used as part of a phrase, even when the industry is the same. I can certainly create a company called MicroChime or YouChime or ChimeSoft.
> If GodTube.com, a religion-centric video site can exist, then so can TeachBook.
Arguably, Youtube has lost its claim on "tube" by not defending its trademark:
http://en.wikipedia.org/wiki/Genericized_trademark#Avoiding_...
If Youtube had sent cease and desist letters to Godtube and other "-tubes", and escalated to court if the person hadn't ceased and desisted, it probably would have worked. (This doesn't get into the morality or cool/uncoolness or business strategy or PR aspects of it, it's just trademark law)
> I don't see how any company can own generic words when used as part of a phrase, even when the industry is the same.
Actually, that's exactly what a trademark is. Owning generic words and phrasings in the same industry.
> I can certainly create a company called MicroChime or YouChime or ChimeSoft.
Debatable. MicroChime would probably be okay if you sold small chimes. If you sold operating systems and business software, you'd absolutely get a cease and desist, and you'd almost certainly lose if it went to court. Again, this doesn't get into the morality of it, just how trademarks generally work these days.
Arguably, Youtube has lost its claim on "tube" by not defending its trademark:
http://en.wikipedia.org/wiki/Genericized_trademark#Avoiding_...
If Youtube had sent cease and desist letters to Godtube and other "-tubes", and escalated to court if the person hadn't ceased and desisted, it probably would have worked. (This doesn't get into the morality or cool/uncoolness or business strategy or PR aspects of it, it's just trademark law)
> I don't see how any company can own generic words when used as part of a phrase, even when the industry is the same.
Actually, that's exactly what a trademark is. Owning generic words and phrasings in the same industry.
> I can certainly create a company called MicroChime or YouChime or ChimeSoft.
Debatable. MicroChime would probably be okay if you sold small chimes. If you sold operating systems and business software, you'd absolutely get a cease and desist, and you'd almost certainly lose if it went to court. Again, this doesn't get into the morality of it, just how trademarks generally work these days.
:-D Let's try it
I don't think they could enforce their trademark if there was a Hackerbook. Throwing tons of money and lawyers at it can make somebody back out, but they shouldn't be able to have exclusivity on [anything]book even in the context of social networks.
Maybe we should :) Although I think hackerbook.com would be a better name for some sort of collaborative book project.
I get what you're saying, but if you look at it from Facebook's point of view if they don't defend their trademark they'll lose it. If there are looks of [something]book.com social networks then [something]book.com just becomes a generic term for a social network. Facebook then loses the right to claim any sort of exclusivity at all on their trademark (I think that's how it works anyway, IANAL obviously)
I get what you're saying, but if you look at it from Facebook's point of view if they don't defend their trademark they'll lose it. If there are looks of [something]book.com social networks then [something]book.com just becomes a generic term for a social network. Facebook then loses the right to claim any sort of exclusivity at all on their trademark (I think that's how it works anyway, IANAL obviously)
They wouldn't loose the right to facebook, only to book.
So somebody could make sexbook (properly already could if it was not a social network, but, say, a book about about porn) but they couldn't make facebookofsex.com
So somebody could make sexbook (properly already could if it was not a social network, but, say, a book about about porn) but they couldn't make facebookofsex.com
And yet, there it is: http://www.facebookofsex.com/
"in the context of social networks"
This becomes a bit of a gray area when every other webapp now comes with some social feature.
This becomes a bit of a gray area when every other webapp now comes with some social feature.
Not really.
The test is whether a customer/client would think this new site was associated/owned/blessed by facebook.
Now, if it has facebook widgets and like buttons all over it, you have problems.
Also consider the cost of your lawyer having fun with Facebook's legal team.
The test is whether a customer/client would think this new site was associated/owned/blessed by facebook.
Now, if it has facebook widgets and like buttons all over it, you have problems.
Also consider the cost of your lawyer having fun with Facebook's legal team.
This was discussed at some length yesterday:
http://news.ycombinator.com/item?id=1633106
Long story short: PerfumeBay lost a case for diluting eBay's trademark; Victor's Little Secret lost a case to Victoria's Secret; Charbucks appears to be on its way to losing to Starbucks. Famous marks can (and may be obligated to) defend themselves against dilution from similar (but not identical) marks.
http://news.ycombinator.com/item?id=1633106
Long story short: PerfumeBay lost a case for diluting eBay's trademark; Victor's Little Secret lost a case to Victoria's Secret; Charbucks appears to be on its way to losing to Starbucks. Famous marks can (and may be obligated to) defend themselves against dilution from similar (but not identical) marks.
How can I possibly distinguish between Coca-Cola and Pepsi-Cola?
If only PepsiCo had been sued out of existence about 50 years ago for "trademark" infringment, we would never had this problem.
If only PepsiCo had been sued out of existence about 50 years ago for "trademark" infringment, we would never had this problem.
By the time Pepsi came along, "Cola" was already a generic term. The guy who invented "Cola" drinks failed to trademark the name (in connection to drinks, as opposed to plants).
He died in obscurity. Maybe if he'd sued Coke at its inception, he could have been as famous as Pemberton.
He died in obscurity. Maybe if he'd sued Coke at its inception, he could have been as famous as Pemberton.
Really? I thought it was called Cola because of Kola.
http://en.wikipedia.org/wiki/Kola_nut
http://en.wikipedia.org/wiki/Kola_nut
In retrospect Microsoft could sue any company with soft in their name; God knows how many software companies use the suffix Soft. What Facebook is doing is simply not positive.
No, they can't because, as you say, there are now many companies using that suffix. If they had gone after companies earlier (as facebook appears to be doing) they might have a case.
That sounds ridiculous. They have the facebook trademark protection, and that's pretty much what they can enforce. And even that's sometimes not enough to enforce a wide range exclusivity. For instance, titles of books can contain the word facebook, and can only be prevent a publisher from using the facebook logo on the cover, but screenshots on the inside pages containing it should be publishable.
Afaik all the evicted antisemitic groups could form a social network called hatebook, and they wouldn't be infringing if they used a different typeface and overall identity.
IANAL, but trademark law is pretty straightforward. This reminds me of http://www.eolas.com/, got to love how they troll about their (e) trademark and all the software patents.
Looking at my list of domains there are:
Even narrowing it down to domains ending in "book" with "face" somewhere in the domain, there are:
* 118152 com domains ending in "book"
* 14450 net domains ending in "book"
* 8666 org domains ending in "book"
Even narrowing it down to domains ending in "book" with "face" somewhere in the domain, there are:
* 6175 com domains
* 691 net domains
* 389 org comains
The real problem is their offsite "Like" button and other offsite widgets.
It is too easy to have these on a site, and users will think it is sanctioned/blessed by Facebook.
This effect is much more significant when the domain name ends in book.[tld].
This is a double-edged sword brought on by their success and operation.
It is too easy to have these on a site, and users will think it is sanctioned/blessed by Facebook.
This effect is much more significant when the domain name ends in book.[tld].
This is a double-edged sword brought on by their success and operation.
Well its sort of good to know. I was planning on using book in one of my new domain names... Ugh. Now I have to find a new name??
It'll be fun to see them go after the CIA World Factbook.
Not going to happen unless they decide to make it into a social network.
I just registered Phasebook, bring in the lawyers!
I'd be hard-pressed to think of this as anything except poor planning when choosing the name. This is not really a case of brand dilution like Xerox, Scotch Tape, or Band-Aids. Guess you should have thought of that earlier, Zuck?
http://en.wiktionary.org/wiki/facebook