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."
So did a third of other random people surveyed. You would not be in the majority apparently, and after seeing a logo or web page you would hopefully be able to figure out it is not created by Facebook.
I think the question is whether you find yourself confused by the fact that Apple makes FaceTime while Facebook makes Facebook (and Think makes FaceCash).
At some point, and this is why the Star Trek / Star Wars example matters, consumers realize that the prefix is generic within the scope of a given market. Telecommunications and faces overlap a lot these days.
Personally I would think that FaceTime and FaceCash were made by Facebook Inc. (As I had actually never heard of either of those).
I also thought that Star Trek and Star Wars were related or the same thing for most of my childhood. I didn't want Star Wars because I'd seen Star Trek on TV and not liked it (I was young).
It's just something people do (or at least I do). I think it's maddness to prevent the use of names starting with "Face" because of this confusion. I thought that iPlayer was apple related like iTunes for a long time. It's confusing yes but I don't feel you should be able to prevent someone using a similar sounding name.
I would expect a product named Facemail to be something created by Facebook either less than or as much as I would expect a product named Facetime to be something created by Facebook.
When we start making these decisions more heavily on the subjectivity of users more than objectivity (e.g. the colors would be completely different, and if they aren't then a trademark infringement could be filed at that time), then we're just giving the free market to large corporations.
The more popular a brand is, the more likely more people are to associate related names/colors/symbols to that brand. Trademark law simply does not exist for cases like this. It exists to prevent genuine outright infringement.
I don't disagree that a well known mark should get more protection because it is well known--otherwise people could just trademark every word in the dictionary and enforce it with equal weight as Google.
But OP wasn't using Facebook, he wasn't using Facebok, he wasn't using Facbook, he wasn't pretending to be Facebook, we wasn't competing with facebook, he wasn't using the colors, the image, or anything related to the brand.
No, he was punished (i.e. the government used force against him to hider his free market ability) for using a name that started with Face. That's simply not a threshold that we, as a society, should accept as protected--no matter the popularity of the brand, no matter the laws a group of 435 people influenced heavily by corporations have managed to actually pass.
Besides that, the ruling is by it's very nature a subjective decision. I disagree with their subjective decision.
"Lawyers are an enormous waste of money and in most circumstances a drain on society."
But you also say:
"No one, on this forum or otherwise, is in any position to evaluate whether or not someone else truly might need a lawyer. Every case tends to be full of nuance."
Why the absolute statement as well as the contradiction if in fact you believe that "No one, on this forum or otherwise, is in any position to evaluate whether or not someone else truly might need a lawyer."
Except when you actually need one... Which it sounds like you did. The facebook lawyers probably didn't bother responding because they knew you had almost no teeth.
No one, on this forum or otherwise, is in any position to evaluate whether or not someone else truly might need a lawyer. Every case tends to be full of nuance.
In my case, you have a history with the plaintiff/opposer, some part of which is confidential, someone who just spent a year as a fellow at Stanford Law School, and who has worked with probably thirty lawyers on various cases, including several trademark cases in the past.
I got a motion for sanctions against Facebook's lawyers granted in part, as well as a motion reversing their redaction choices. Granted, I didn't win, but I might not have expected to going in, and it shows at the very least that I'm not your average pro se plaintiff.
I think people either really overestimate the abilities of lawyers, or underestimate a persons ability to learn and understand the law and legal process themselves.
Yes, good lawyers are valuable and cannot be underestimated. But let's not be fooled to think that some C student lawyer who limped though the Bar is any more capable than someone with passion and intellect devoted to a specific case or issue.
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.
It's product confusion that matters. Facebook doesn't have video, so it shouldn't matter. Facebook doesn't really have email, so i'm not sure how they claim it is confusing. No one says, "go sign up for email on facemail, oh i mean facebook."
In this case there is Facebook (huge, very well known) and someone else (not so huge, not so well known) so it seems obvious to me that there's a chance for confusion.
People are quoting the 36%, but do we know what the other two 3rds said?
Incorrect on two counts. It's the international classification code overlap that matters, and likelihood of confusion, not product confusion. There could be no actual confusion here because the FACEMAIL trademark was filed on an intent-to-use basis.
This is a sad state of affairs, and it's even more worrying that this can be applied universally. Enron's disgraced CEO Jeffrey Skilling is receiving an early release from jail due to his promise not to appeal his conviction anymore -- effectively buying his way out of jail.
Wow... he badgered the courts into letting him go? When Jim Bell tried that, they just slapped him with "harassment and stalking of federal agents" and stuck him back in jail.
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?
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.
Not RFC2821/RFC2822 email, but it is a form of email as far as the public are concerned. The term "email" doesn't necessarily have to mean Internet email that is compatible with other Internet email systems, even if you might wish it to.
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.
The end of the report says something along the lines that Facebook can expect to win an opposition if the Face* thing can be argued to be related to something Facebook actually does and if there's a significant portion of a survey that associates it with Facebook (30% is not low). So Faceplanting is fine, but Facetalk, Facemail, Facefriends, Facephotos are probably things Facebook can oppose and win if they haven't been trademarked yet.
They won because the products (messaging) are identical, the customers (people over 13) are the same, the distribution channels (the Internet) are the same, and because Facebook has a huge recognition in the social media sector (matched in the survey only by Twitter) and many many users (despite the fact that people can sign up for more than one account).
Facebook aren't asking to police all uses of Face*, they asked to stop a specific trademark for a single product.
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."
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.
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.
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.
99 comments
[ 3.4 ms ] story [ 162 ms ] threadI 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.
Might be worth looking over the history between Apple Corps and Apple Computer [1]. Who should have had the trademark there?
[1] http://en.wikipedia.org/wiki/Apple_Corps_v_Apple_Computer
36% were confused by FACEMAIL, and 0% were confused by THINKMAIL.
29% is considered enough to be confusing.
So you're in the 36.2%. Was there another point you were trying to make? (fwiw, I'd be in the 63.8% of that poll).
At some point, and this is why the Star Trek / Star Wars example matters, consumers realize that the prefix is generic within the scope of a given market. Telecommunications and faces overlap a lot these days.
It's just something people do (or at least I do). I think it's maddness to prevent the use of names starting with "Face" because of this confusion. I thought that iPlayer was apple related like iTunes for a long time. It's confusing yes but I don't feel you should be able to prevent someone using a similar sounding name.
When we start making these decisions more heavily on the subjectivity of users more than objectivity (e.g. the colors would be completely different, and if they aren't then a trademark infringement could be filed at that time), then we're just giving the free market to large corporations.
The more popular a brand is, the more likely more people are to associate related names/colors/symbols to that brand. Trademark law simply does not exist for cases like this. It exists to prevent genuine outright infringement.
The link steps through the decisions, and gives case law for the reason. Which step do you disagree with?
EDIT: The link says clearly that a well known mark gets more protection just because it is well known.
But OP wasn't using Facebook, he wasn't using Facebok, he wasn't using Facbook, he wasn't pretending to be Facebook, we wasn't competing with facebook, he wasn't using the colors, the image, or anything related to the brand.
No, he was punished (i.e. the government used force against him to hider his free market ability) for using a name that started with Face. That's simply not a threshold that we, as a society, should accept as protected--no matter the popularity of the brand, no matter the laws a group of 435 people influenced heavily by corporations have managed to actually pass.
Besides that, the ruling is by it's very nature a subjective decision. I disagree with their subjective decision.
https://www.facebook.com/help/224049364288051
"Lawyers are a waste of money"
and
"Lawyers are an enormous waste of money and in most circumstances a drain on society."
But you also say:
"No one, on this forum or otherwise, is in any position to evaluate whether or not someone else truly might need a lawyer. Every case tends to be full of nuance."
Why the absolute statement as well as the contradiction if in fact you believe that "No one, on this forum or otherwise, is in any position to evaluate whether or not someone else truly might need a lawyer."
In my case, you have a history with the plaintiff/opposer, some part of which is confidential, someone who just spent a year as a fellow at Stanford Law School, and who has worked with probably thirty lawyers on various cases, including several trademark cases in the past.
I got a motion for sanctions against Facebook's lawyers granted in part, as well as a motion reversing their redaction choices. Granted, I didn't win, but I might not have expected to going in, and it shows at the very least that I'm not your average pro se plaintiff.
Yes, good lawyers are valuable and cannot be underestimated. But let's not be fooled to think that some C student lawyer who limped though the Bar is any more capable than someone with passion and intellect devoted to a specific case or issue.
Thanks for the response.
People are quoting the 36%, but do we know what the other two 3rds said?
And Facebook does have video features.
https://www.facebook.com/videocalling/
https://en.wikipedia.org/wiki/Apple_Corps_v._Apple_Computer
This is why we cannot have nice things.
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...
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
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.
Facebook aren't asking to police all uses of Face*, they asked to stop a specific trademark for a single product.
http://ttabvue.uspto.gov/ttabvue/v?pnam=Facebook,%20Inc.
All your link shows is a trademark holder protecting their trademark. Some of those will win, some will lose.
It sucks that the legal system requires trademark holders to do that. But it's not Facebook's fault.
But still a go on SnapFace.
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.
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.