As a cycling fan we've had a few of these sorts of shady cases where people try to take a pre-existing term, trademark it and then threaten to sue people legitimately using it.
Recent examples that have amused me include when Specialized Bicycle Components released a bike named after the French town of Roubaix and its famous bike race on cobbled roads... then proceeded to start threatening other businesses also named after the town.
Or the company Peloton Interactive Inc which named its indoor spinning product after the commonly used name for a group of cyclists "peloton"... and then proceeded to start threatening bloggers for using the term to describe groups of cyclists.
What's particularly funny about the peloton case is that some other outfit in California is claiming a trademark on the term "spinning" to describe people indoors using static spin bikes... and has proceeded to start threatening small gyms for using that term.
Not sure if this is known as trademark trolling or not but I'm going to quietly trademark that term and start sending out threatening letters just in case.
Specialized is notorious for trademark scummery, it's a shame people still buy their bikes. Other words they've claimed are "epic," "rockhopper," and "stumptown."
Actually Advanced Sports International, owners of the Fuji brand, licensed the Roubaix brand to Specialized in 2003. It's not even their own trademark.
Ten years ago I developed a local rock climbing database called Climbook. Small website (~1000 users), no ads, no money involved. Facebook has spent the last 3 years suing the owner, saying it's a trademark violation. The first two rounds at court rejected facebook claims, now they're up for a third. Horrible people.
Years ago when I quit facebook it was because I hated how much I looked at it, and the distorted view it created of the world around me. Now I'm glad I quit just because it's wretched company that does wretched things.
Whenever these trademark stories come up, everyone seems to get angry without trying to bother to understand how trademarks work. They think that they're like copyrights, that trademarks require originality or disallow all forms of copying or something like that. I'm generally in favour of trademarks and I don't think trademarking common words is as problematic as most people think.
When some word is trademarked, it doesn't mean nobody else is allowed to say that word. I can write all day and all night about windows, apples, and lifts without having to get lawyers in my face about it. And if the lawyers do come, they might just request that I acknowledge the trademarks that I was using in a way that could confuse consumers.
You don't need to defend everyone else's trademarks on your own. If you want to generically say to "google" as a verb for any kind of search, go right ahead. It's Google's job to defend that trademark, not yours, and I think they may well lose that fight some day.
Trademarks allow common, dictionary words. There's no requirement for a trademark to be original or creative. All it has to be is distinctive. I can call software "Windows" and I can call a music producer "Apple". Generic words are usually only disallowed as trademarks when they are used to generically describe the thing under commerce. Facebook couldn't become a bookseller with the trademark "book", for example. (Little known fact, though, "facebook" itself was a common word, referring to college-provided printed books with fellow classmates' photos on them. I assume since no one is making those anymore, or because Facebook never produced printed facebooks, they now can elude any accusations of genericism.)
The test for trademark infringement is, are you using the trademark in a way that a reasonable consumer could be confused that you're selling the same thing as what someone else has under the same trademark? I don't think anyone has been referring to all social networking sites as "books", thereby invalidating the claim that Facebook has a valid trademark on "book".
Please, try to understand trademarks. One of my pet peeves with people who lump them under "intellectual property" is that they think that trademarks are somewhat similar to copyright or patents, but these are all very different laws with different purposes, histories, and ways of being defended and infringed. It doesn't all just mean "reproduction is disallowed".
This is a type of HN comment that I see often and don't appreciate. Format: "Your disapproval of [thing] can only be rooted in misunderstanding of [technicalities]. [Flex re: said technicalities.]"
People who are familiar with how trademarks work can still be dubious of Facebook's attempt to register BOOK. Is there a context in which I would accept it as distinctive? Yes, of course: the name of a social networking service. Is Facebook applying under such narrow terms? Not as far as I can tell. And do I trust Facebook to be tasteful and show restraint in defending this trademark, if it's granted? Not in a million years.
P.S. This is almost beside the point, but remember when Monster Cable sued a bunch of small businesses—most famously a mom-and-pop mini-golf course—over trademark infringement?[0] At the time, there was no shortage of pedants chiming in to say that Monster didn't _need_ to be such a bully, that it wasn't an issue of the trademark system per se. As if that were some consolation!
I think it's appropriate to have a bias toward hostility when a large company makes a large claim, because they've got the legal resources to win basically any dispute once they have a foothold.
> I can call a music producer "Apple"
Even if you could, it would likely be a legal pain in the ass. Apple fought over using the letter "i" as a prefix to product names.
Might as well start fighting as soon as a large company even tries to claim something with a public-domain vibe.
I agree with you in general. However, as others have already pointed out, Facebook wants to claim protection for a really (REALLY) wide range of goods/services. If granted, pretty much anyone selling software or hardware using "book" in its name might be vulnerable to bullying by Facebook's lawyers.
Typically, one just registers a word trademark for a very small number of service/goods classes (e.g., here's a registered trademark for "car" which only applies to certain medical devices and services [1]).
A large company trying to claim "book" for pretty much the whole Nice Class 9 is not normal behavior.
Even as a trademark and not a copyright, I see at least one area requested which seems highly ambiguous:
"Software to enable accessing, displaying, editing, linking, sharing and otherwise providing electronic media and information via the internet and communications network"
Now, let's imagine a book publisher who wants to devise his proprietary software to display and share his books, I could imagine he would fear that this trademark would impair him to use the simple word "Book" to do so.
Same for Virtual Reality devices: if there is on day a VR adaptation of books, in which you could walk and interact with characters and follow the plot from within, the use of the word 'Book' would make sense for the collection (regardless of whether this is a good commercial idea or not), but what would be facebook reaction about that if they are granted the trademark, especially as they are quite involved in VR ?
I respect your lengthy comment but I will respond with a much much shorter one. If the "law" (regulation, constitution, etc.) defies logic and sense, then it is the law that should change. Not rape the planet and its inhabitants because that CANCER called Facebook with those greedy bastard C-suites and shareholders want to "move fast and break things" want to add one-more-zero to their bottom line. They deserve oblivion. Nothing less.
I'd agree with you, except there are enough counter-examples to give me pause. See the Peloton and Roubaix examples in the sibling comment. Companies can and do trademark common words within their industry and use that as a legal sledgehammer.
In your examples (Windows, Apple) the word isn't a core part of the industry (or, wasn't when initially trademarked).
I'm fairly sure on this site that virtually everyone understands at least the basics of how trademarks work and many or most still disagree. Your write up is informative, useful, and I think on on the wrong track.
The interesting point is not whether bob's bookstore to exist and advertise or that you can continue to blog about books. Nobody believed either of those things were in danger.
Everyone here at least likely knows that trademarks are bounded by categories except theirs is so voluminous were I to paste it here it would take up an entire page. The best I can figure it basically means anything at all to do with any sort of computer.
I for one don't think there is any reason to believe they ought to own the word book in conjunction with any hardware or software. There are in fact I'm sure plenty of people already "infringing" who would like to continue doing business without scum bags demanding protection money.
This is just another example of the fact that Zuckerberg doesn't even know what the "right thing" looks like.
Did you see the list of goods and services they seek BOOK trademark for? It's pretty long, would be easier to list what is _not_ included. Some examples:
> Software in the nature of a mobile application
> Messaging software
> Communication software and communication computer hardware for providing access to the Internet
and the mighty fine, generic,
> application software
Now this may or may not be FUD: don't go holding your breath until they would come with a lawsuit against anything that matches book.
I suppose its worth noting that the company is trying to trademark them in Class 9:
Class 9
Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity;
apparatus for recording, transmission or reproduction of sound or images;
magnetic data carriers, recording discs;
automatic vending machines and mechanisms for coin-operated apparatus;
cash registers, calculating machines, data processing equipment and computers;
fire-extinguishing apparatus.
Explanatory Note
This Class includes, in particular:
– apparatus and instruments for scientific research in laboratories;
– apparatus and instruments for controlling ships, such as apparatus and instruments, for measuring and for transmitting orders;
– the following electrical apparatus and instruments:
(a) certain electrothermic tools and apparatus, such as electric soldering irons, electric flat irons which, if they were not electric, would belong to Class 8;
(b) apparatus and devices which, if not electrical, would be listed in various classes, i.e., electrically heated clothing, cigar-lighters for automobiles;
– protractors;
– punched card office machines;
– amusement apparatus adapted for use with television receivers only;
– all computer programs and software regardless of recording media or means of dissemination, that is, software recorded on magnetic media or downloaded from a remote computer network.
This Class does not include, in particular:
– the following electrical apparatus and instruments:
(a) electromechanical apparatus for the kitchen (grinders and mixers for foodstuffs, fruit presses, electrical coffee mills, etc.), and certain other apparatus and instruments driven by an electrical motor, all coming under Class 7;
(b) electric razors and clippers (hand instruments) (Cl. 8);
(c) electric toothbrushes and combs (Cl. 21);
(d) electrical apparatus for space heating or for the heating of liquids, for cooking, ventilating, etc. (Cl. 11);
– clocks and watches and other chronometric instruments (Cl. 14);
– control clocks (Cl. 14).
Facebook is trying to register BOOK as a word mark at the EUIPO (EU Intellectual Property Office). The application is "under examination".
This means that EUIPO decided this application meets the minimum requirements and has actually assigned an examiner to this instead of refusing the application as it is IMHO too generic.
Trademarks allow dictionary words. Windows, Apple, Uber... These are dictionary words. Usually trademarks only disallow dictionary words if the business being trademarked is too generically described by that word. For example, a window cleaner called Windows or a produce seller called Apple; that's not allowed.
The point of a trademark is to be distinctive. Unlike copyright, there's no requirement for a trademark to be creative or original. I don't care to find the details of what Facebook is trying to trademark, but it may well be the case that "book" is a valid trademark.
Everybody here is dismissing the idea that business could be affected because book stores are in some kind of other category - what about tech and software like
book2: language learning platform
Galaxy Book2: Samsung Product
book.com: Barnes & Nobles URL
duelingbook.com: Yu-Gi-Oh! Simulator
books24.in: Online Billing
book24.ru: Web book store
bookweb: American bestseller association
...
I understand the idea of trademarks and would not call it a bad one - it makes sense that companies want to protect their name from direct copycats in the same sector. It is fair that some companies protect deviations from their actual name, too (Twitter, tweets. Microsoft Windows 10, Win10). But nobody calls "Facebook" "book" and it's not like they have a palette of products with the word in it, like iPhone/iPad/iOS or something. If somebody can explain how they're possibly acting in good faith here please elaborate, but I hope they get shut down, especially since it is well established that megacorps can just keep bullying regarding trademarks and the like, even if they are clearly wrong [0].
Trademark is evil same is with patent and copyright. It's just a corporate tool to gain free money from work of people who passed away long time ago.
Those tools have one purpose - stop innovation and progress for years.
One can imagine a world without patents or copyright still thriving. How can a consumer marketplace exist where its impossible to discover which of 100 products are made by whom and which are likely to fall apart or kill you?
I recently registered 'twitbook.uk' when the .uk TLD opened for general registrations, with the intention of running a satirical social network that would blatantly ask for personal information, allow open bidding to access the data, and provide features such as 'make me angry' or 'validate my opinions'. Just for fun of course, no real information would be solicited or sold.
I wonder if such a site would be considered a violation of this trademark, were it to be granted.
Given the umpteen categories they have this application applying to, what would their purpose for doing this be? To register "FACE" and "BOOK" together?
Can someone explain to me what the implications of this trademark could be? Would that mean that a store that sells books and would have the word Book in their logo or brand could expect a lawsuit?
I think this is pretty much for occupying legal departments with benign work. At least in some European countries with strong legal lobbies, they are very welcome to do that. It is also sometimes used to advance shady trademarks that can only succeed in contrast to applications like this.
Seems just like lawyers doing lawyer things. People always read headlines like this and imagine Zuck sitting around a conference table with a bunch of his underlings cackling about their next big evil plot, but I bet he doesn't even know about this it's just their legal team doing what they've been paid to do - protect their trademark as much as possible.
Just because someone is paid to do evil things doesn't mean it's suddenly okay. In fact, getting paid is one of the most common reasons people do evil things.
Noobs should become familiar with ICANN, WIPO, the US trademark database (TESS) at (uspto.gov), GDPR (European Union), and the European Union's trademark database ( https://euipo.europa.eu/eSearch/#details/trademarks/01807570... ). As well as the rules for obtaining a trademark or patent. I hope Facebook isn't obtaining a work mark trademark. Hopefully, only a design mark. Along with the words "NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "GAME" APART FROM THE MARK AS SHOWN". Book is a generic word and doesn't show source. The EU shouldn't give Facebook an exclusive right to use book. Steve Feibish (book.us)
[+] [-] Lio|6 years ago|reply
Recent examples that have amused me include when Specialized Bicycle Components released a bike named after the French town of Roubaix and its famous bike race on cobbled roads... then proceeded to start threatening other businesses also named after the town.
Or the company Peloton Interactive Inc which named its indoor spinning product after the commonly used name for a group of cyclists "peloton"... and then proceeded to start threatening bloggers for using the term to describe groups of cyclists.
What's particularly funny about the peloton case is that some other outfit in California is claiming a trademark on the term "spinning" to describe people indoors using static spin bikes... and has proceeded to start threatening small gyms for using that term.
Not sure if this is known as trademark trolling or not but I'm going to quietly trademark that term and start sending out threatening letters just in case.
[+] [-] katmannthree|6 years ago|reply
[+] [-] shardinator|6 years ago|reply
[+] [-] petre|6 years ago|reply
https://www.bikeradar.com/news/specialized-roubaix-trademark...
[+] [-] dmix|6 years ago|reply
Do the courts not view this stuff with context of the specific business they are in, in addition to legacy/common uses of the word?
[+] [-] paozac|6 years ago|reply
[+] [-] libraryatnight|6 years ago|reply
[+] [-] eb0la|6 years ago|reply
[+] [-] jordigh|6 years ago|reply
When some word is trademarked, it doesn't mean nobody else is allowed to say that word. I can write all day and all night about windows, apples, and lifts without having to get lawyers in my face about it. And if the lawyers do come, they might just request that I acknowledge the trademarks that I was using in a way that could confuse consumers.
You don't need to defend everyone else's trademarks on your own. If you want to generically say to "google" as a verb for any kind of search, go right ahead. It's Google's job to defend that trademark, not yours, and I think they may well lose that fight some day.
Trademarks allow common, dictionary words. There's no requirement for a trademark to be original or creative. All it has to be is distinctive. I can call software "Windows" and I can call a music producer "Apple". Generic words are usually only disallowed as trademarks when they are used to generically describe the thing under commerce. Facebook couldn't become a bookseller with the trademark "book", for example. (Little known fact, though, "facebook" itself was a common word, referring to college-provided printed books with fellow classmates' photos on them. I assume since no one is making those anymore, or because Facebook never produced printed facebooks, they now can elude any accusations of genericism.)
The test for trademark infringement is, are you using the trademark in a way that a reasonable consumer could be confused that you're selling the same thing as what someone else has under the same trademark? I don't think anyone has been referring to all social networking sites as "books", thereby invalidating the claim that Facebook has a valid trademark on "book".
Please, try to understand trademarks. One of my pet peeves with people who lump them under "intellectual property" is that they think that trademarks are somewhat similar to copyright or patents, but these are all very different laws with different purposes, histories, and ways of being defended and infringed. It doesn't all just mean "reproduction is disallowed".
[+] [-] theobeers|6 years ago|reply
People who are familiar with how trademarks work can still be dubious of Facebook's attempt to register BOOK. Is there a context in which I would accept it as distinctive? Yes, of course: the name of a social networking service. Is Facebook applying under such narrow terms? Not as far as I can tell. And do I trust Facebook to be tasteful and show restraint in defending this trademark, if it's granted? Not in a million years.
P.S. This is almost beside the point, but remember when Monster Cable sued a bunch of small businesses—most famously a mom-and-pop mini-golf course—over trademark infringement?[0] At the time, there was no shortage of pedants chiming in to say that Monster didn't _need_ to be such a bully, that it wasn't an issue of the trademark system per se. As if that were some consolation!
[0] https://www.techdirt.com/articles/20080515/1940111131/
[+] [-] human20190310|6 years ago|reply
> I can call a music producer "Apple"
Even if you could, it would likely be a legal pain in the ass. Apple fought over using the letter "i" as a prefix to product names.
Might as well start fighting as soon as a large company even tries to claim something with a public-domain vibe.
[+] [-] raphman|6 years ago|reply
Typically, one just registers a word trademark for a very small number of service/goods classes (e.g., here's a registered trademark for "car" which only applies to certain medical devices and services [1]).
A large company trying to claim "book" for pretty much the whole Nice Class 9 is not normal behavior.
[1] https://euipo.europa.eu/eSearch/#details/trademarks/00939884...
[+] [-] GlobalFrog|6 years ago|reply
[+] [-] HenryBemis|6 years ago|reply
[+] [-] alistairSH|6 years ago|reply
In your examples (Windows, Apple) the word isn't a core part of the industry (or, wasn't when initially trademarked).
[+] [-] michaelmrose|6 years ago|reply
The interesting point is not whether bob's bookstore to exist and advertise or that you can continue to blog about books. Nobody believed either of those things were in danger.
Everyone here at least likely knows that trademarks are bounded by categories except theirs is so voluminous were I to paste it here it would take up an entire page. The best I can figure it basically means anything at all to do with any sort of computer.
I for one don't think there is any reason to believe they ought to own the word book in conjunction with any hardware or software. There are in fact I'm sure plenty of people already "infringing" who would like to continue doing business without scum bags demanding protection money.
This is just another example of the fact that Zuckerberg doesn't even know what the "right thing" looks like.
[+] [-] im3w1l|6 years ago|reply
And many early webpages had guestBOOK's where people could leave comments.
[+] [-] retSava|6 years ago|reply
> Software in the nature of a mobile application > Messaging software > Communication software and communication computer hardware for providing access to the Internet
and the mighty fine, generic,
> application software
Now this may or may not be FUD: don't go holding your breath until they would come with a lawsuit against anything that matches book.
[+] [-] seattlebarley|6 years ago|reply
[deleted]
[+] [-] Angostura|6 years ago|reply
Class 9
Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.
Explanatory Note
This Class includes, in particular: – apparatus and instruments for scientific research in laboratories; – apparatus and instruments for controlling ships, such as apparatus and instruments, for measuring and for transmitting orders; – the following electrical apparatus and instruments: (a) certain electrothermic tools and apparatus, such as electric soldering irons, electric flat irons which, if they were not electric, would belong to Class 8; (b) apparatus and devices which, if not electrical, would be listed in various classes, i.e., electrically heated clothing, cigar-lighters for automobiles; – protractors; – punched card office machines; – amusement apparatus adapted for use with television receivers only; – all computer programs and software regardless of recording media or means of dissemination, that is, software recorded on magnetic media or downloaded from a remote computer network. This Class does not include, in particular: – the following electrical apparatus and instruments: (a) electromechanical apparatus for the kitchen (grinders and mixers for foodstuffs, fruit presses, electrical coffee mills, etc.), and certain other apparatus and instruments driven by an electrical motor, all coming under Class 7; (b) electric razors and clippers (hand instruments) (Cl. 8); (c) electric toothbrushes and combs (Cl. 21); (d) electrical apparatus for space heating or for the heating of liquids, for cooking, ventilating, etc. (Cl. 11); – clocks and watches and other chronometric instruments (Cl. 14); – control clocks (Cl. 14).
[+] [-] jwildeboer|6 years ago|reply
This means that EUIPO decided this application meets the minimum requirements and has actually assigned an examiner to this instead of refusing the application as it is IMHO too generic.
[+] [-] rndgermandude|6 years ago|reply
[+] [-] OliverJones|6 years ago|reply
https://en.wikipedia.org/wiki/Johannes_Gutenberg
They were called codices (plural of codex) back then, though.
I hope EU uses this application for a few laffs, then denies it.
What's next? Will they tried to register FRIEND and LIKE as wordmarks? How about "FAKE NEWS"?
[+] [-] jordigh|6 years ago|reply
The point of a trademark is to be distinctive. Unlike copyright, there's no requirement for a trademark to be creative or original. I don't care to find the details of what Facebook is trying to trademark, but it may well be the case that "book" is a valid trademark.
[+] [-] ticklemyelmo|6 years ago|reply
[+] [-] nhebb|6 years ago|reply
[+] [-] LanceH|6 years ago|reply
[+] [-] icebraining|6 years ago|reply
[+] [-] blackbrokkoli|6 years ago|reply
book2: language learning platform
Galaxy Book2: Samsung Product
book.com: Barnes & Nobles URL
duelingbook.com: Yu-Gi-Oh! Simulator
books24.in: Online Billing
book24.ru: Web book store
bookweb: American bestseller association
...
I understand the idea of trademarks and would not call it a bad one - it makes sense that companies want to protect their name from direct copycats in the same sector. It is fair that some companies protect deviations from their actual name, too (Twitter, tweets. Microsoft Windows 10, Win10). But nobody calls "Facebook" "book" and it's not like they have a palette of products with the word in it, like iPhone/iPad/iOS or something. If somebody can explain how they're possibly acting in good faith here please elaborate, but I hope they get shut down, especially since it is well established that megacorps can just keep bullying regarding trademarks and the like, even if they are clearly wrong [0].
[0] https://nissan.com/
[+] [-] szczepano|6 years ago|reply
[+] [-] michaelmrose|6 years ago|reply
Trademark has a purpose.
[+] [-] ksangeelee|6 years ago|reply
I wonder if such a site would be considered a violation of this trademark, were it to be granted.
[+] [-] ourlordcaffeine|6 years ago|reply
[+] [-] nacs|6 years ago|reply
You may run into trouble because of the handling/distribution of personal information though (GDPR compliance and such).
Disclaimer: Not a lawyer
[+] [-] Hamuko|6 years ago|reply
[+] [-] zahreeley|6 years ago|reply
[deleted]
[+] [-] onetimemanytime|6 years ago|reply
[+] [-] notkaiho|6 years ago|reply
[+] [-] zozbot234|6 years ago|reply
[+] [-] martin-adams|6 years ago|reply
[+] [-] marapuru|6 years ago|reply
I'm not that familiar with trademarks and such.
[+] [-] mirimir|6 years ago|reply
[+] [-] kjar|6 years ago|reply
[+] [-] raxxorrax|6 years ago|reply
[+] [-] artursapek|6 years ago|reply
[+] [-] pentae|6 years ago|reply
[+] [-] kerkeslager|6 years ago|reply
Capitalism doesn't work as a moral compass.
[+] [-] schappim|6 years ago|reply
[+] [-] sbfeibish|6 years ago|reply
[+] [-] sbfeibish|6 years ago|reply