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."
I'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.
I wonder how Apple got around the problems with their name being the same as the record label. I somewhere heard that they got the permission to use it if they promise not to enter the music business. ... which they did with the iPod.
The "face" part of FaceTime seems quite directly descriptive of what FaceTime does to me. I know that descriptive names cannot be trademarked. Perhaps that has some bearing on this?
Having 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."
Don'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...
Not 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.
Human 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.
A 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.
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.
In 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.
Yes, 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...). That went away, but they are legally required to try and enforce the trademark or they lose the right.
[+] [-] thinkcomp|12 years ago|reply
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.
[+] [-] hyborg787|12 years ago|reply
[+] [-] shrughes|12 years ago|reply
[+] [-] WestCoastJustin|12 years ago|reply
[+] [-] arb99|12 years ago|reply
[+] [-] qq66|12 years ago|reply
[+] [-] jeena|12 years ago|reply
[+] [-] rlpb|12 years ago|reply
[+] [-] aliston|12 years ago|reply
[+] [-] _dark_matter_|12 years ago|reply
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|12 years ago|reply
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
[+] [-] darkarmani|12 years ago|reply
[+] [-] cglace|12 years ago|reply
[+] [-] dpcan|12 years ago|reply
[+] [-] cheald|12 years ago|reply
[+] [-] dhughes|12 years ago|reply
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.
[+] [-] unknown|12 years ago|reply
[deleted]
[+] [-] codereflection|12 years ago|reply
This is why we cannot have nice things.
[+] [-] Bill_Dimm|12 years ago|reply
[+] [-] rayiner|12 years ago|reply
[+] [-] hyborg787|12 years ago|reply
[+] [-] vog|12 years ago|reply
[+] [-] 3stripe|12 years ago|reply
[+] [-] 1st1|12 years ago|reply
[+] [-] DanBC|12 years ago|reply
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.
[+] [-] wnevets|12 years ago|reply
[+] [-] jneen|12 years ago|reply
[+] [-] balanon|12 years ago|reply
But still a go on SnapFace.
[+] [-] mikemoka|12 years ago|reply
[+] [-] arb99|12 years ago|reply
[+] [-] epmatsw|12 years ago|reply
[+] [-] darkarmani|12 years ago|reply
[+] [-] ferdo|12 years ago|reply
[+] [-] benburleson|12 years ago|reply
[+] [-] shaunxcode|12 years ago|reply
[+] [-] Apocryphon|12 years ago|reply
[+] [-] thinkcomp|12 years ago|reply
[+] [-] austinl|12 years ago|reply
[+] [-] dudurocha|12 years ago|reply
[+] [-] jmtame|12 years ago|reply
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...). That went away, but they are legally required to try and enforce the trademark or they lose the right.
[+] [-] akadien|12 years ago|reply
[+] [-] dram|12 years ago|reply