It just seems a bit melodramatic. Should Google Mail have been named Google Post, just because Yahoo Mail was first? They aren't operating in the same space; furthermore, Facebook didn't name it just "Paper" in the App Store, they've named it "Paper - stories from Facebook".
I do not know - there are 240 apps in Google Play store that have "paper" in name. This includes "Draw Paper", "Paper Draw ", "White Paper", "Infinite Paper" and countless others. Also at least two apps are just called "Paper" - not sure how anyone can distinguish them other than looking at company name.
I seriously doubt that 53 was the first company that used Paper in the name.
I don't know what you mean there is "Paper – stories from Facebook" and "Paper by FiftyThree". You know what I don't see them complaining about? "Paper" by misoft (an identical product by the way) and 100 other apps with paper in the title. Considering misoft got "paper" and fifty three had to use "Papaer by FiftyThree" it kind of makes me wonder if this isn't a case of the pot calling the kettle black.
This seems much more like manufactured controversy for free press than anything else.
It makes sense for a "newspaper" type app as well. It's not often I hear someone say "I'm going to get the newspaper" but far more often I hear "I'm going to get the paper".
Honestly, I think we'll see more downloads of Paper (53) because of confused people looking to download Paper (FB). I see this is as a huge PR win for 53 and both will end up co-existing and succeeding (probably).
There are TWO billion-dollar storage companies with Box in the name. Now that's confusing.
Which Apple? it worked out okay for the company that came along and took the name later. Apple Corp has essentially lost their name at this point though
A slightly related anecdote: Yesterday I saw grafitti that said "resistance is fertile". A good twist, I thought, especially for potential startups that could go the way of "let's make another photo app" vs. "let's solve something important".
I think Facebook should change Paper's name mainly because Paper is a horrible name for this product, which is actually "Facebook without all the crap you never use". The fact that "Paper by FiftyThree" is a name already in use is another factor, why fight this battle when the name isn't even very good?
My first thought when I read the Facebook Paper announcement was along these lines.
This is a big social faux paus on Facebook's part - at least among the developer community - but I really don't see either company changing their Paper's name. I imagine it'll go similarly to Google's Go name collision[1].
How should the little guy in these situations be legally protected? On one hand it's clear that "candy" shouldn't be trademarked, but "paper" is just as generic a term. Maybe the lesson here is not to name your product generic nouns and avoid the trouble all together.
That's what I thought of, since two programming languages are even more alike.
Did it not turn out to be a legal issue because there was ultimately little commercial interest behind the Go![1] language?
Apple Computer had to pay Apple Corps, even though it seemed like the computer industry had little to do with the music industry at the time[2], so it is confusing how the conflict can be ignored until it goes away.
It's a matter of respect. Paper (FiftyThree) is a well known brand and app, so basically the Facebook developers were 100% aware that they were utilizing someone's name (at least they should have been), and therefore they went ahead to publish their new app with complete disregard for what already existed.
On the other hand, FiftyThree have chosen a very common English word for their product name. You can't call dibs on a word like "paper", and this was a risk they should have taken into account. Either choose a proper (and trademarkable) name, or choose a common word and expect such consequences. You can't have it both ways, and I think even considering Facebook's Paper, FiftyThree have probably made the right tradeoff. Whining about it now just makes them look bad.
What about something like "Square?" That's about as generic as it gets, yet is there any question as to what someone is referring to when they are talking about "Square" in the context of an app?
There are two sides of the story. Square (Paper in this case) probably does not benefit greatly from whining (from both PR and legal perspectives), but why would a company take the name to begin with. Either they were blind, or confident that there brand would bypass whatever was existing, or they are hoping to ride off existing brand recognition for a quick boost.
Eh … whenever someone mentions Square I first think of Squarespace. That’s the much more present Square brand in my head (probably because I listen to way too many podcasts and Squarespace seems to advertise on all of them while Square isn’t relevant or present at all in Germany).
Their brand name really manages to confuse me whenever it’s mentioned … but that just comes with the territory of picking something so generic.
So, yes, there is a question what someone is referring to when they talk about Square in the context of an app. That happened to me several times already, here on HN. I read some headline with Square in it, click on it and am confused why it’s not about website hosting.
I have little doubt that it is possible to build an extremely successful brand that no one confuses with anything else around a very generic term (just think of Apple), but if you want that super-generic word to work out for you (and those words can be cool to use, no doubt) you have to live with people confusing you until you pull it off. It’s a trade-off.
U.S. trademark law uses what are called the Abercrombie classes of whether a purported brand name is 1. generic, 2. descriptive, 3. suggestive, or 4. arbitrary or fanciful, as applied in the context of the product or service for which it's being used as a brand ([1] and see e.g. [2], p. 7). The word "Apple" as a brand for computers is famously an example of an arbitrary or fanciful word in its product context. The same might not be said for the word "paper" for a medium for writing and drawing.
Where does one draw the line for a word that is too common for your business? Here are the rankings of just a few company names that utilized popular words.
521 - paper
1991 - match
2723 - apple
2777 - square
2921 - target
Imagine if Facebook came out with a new camera app that was called Facebook Target. There would be no doubt that there was clear negligence on Facebook's part. I feel like here I need to disclose that I am no lawyer, and that this is where Trademark law comes into effect. It's just disappointing that an innovative tech company would act this way when it's completely unnecessary. I think that if the app was called Facebook News it would be just as effective as if it was Facebook Paper.
There are over 2,000 records that include various forms of the word "target". Over 3,000 for "apple". Over 3,000 for "windows".
If you use a common word in a trademark you may be able to prevent others from using it for the exact same (or very similar) product, but you don't own the word outright.
Facebook might well be okay with a camera app called Target (though they might not be -- someone else may be using it for that purpose already). They would definitely be in trouble if they started a department store called "Facebook Target", though.
If I was in FiftyThree's position I would be pissed off. But it is a very common word. Simply changing the name of the app to 'Facebook Paper' would probably help with a lot of the issues it might cause.
Yeah, it will be pretty ridiculous if FiftyThree manages to enforce some kind of IP over the use of the word "paper" as a name for a product... Trademarking common English words, anyone?
Windows, Apple, etc are all trademarked, pls stop being an arm chair lawyer and recognize there is a huge amount of precedent in using common english words to trademark things other than their common usage.
MS can trademark Windows in conjunction with computer interfaces, but not if they decide to make windows that go in houses. That's where the common usage trademark issue arises. Also, if like kerosene the word becomes common usage then the trademark can be revoked.
The law is nuanced, there is no blanket ban on trademarking words in common usage.
Yes, I understand that. It just looks to me like a lack of much overlap between the products. In the case where the products don't overlap, if you are successful at legal action against the other product then it starts to look a lot more like "trademarking a word" rather than "trademarking a word as a name for a product that operates in X space", and one of these two things is much more irksome than the other. If it makes you feel any better, this is not my "legal opinion", this is my John Publik voter's opinion.
People are going to call the app by Facebook "Facebook Paper" because "Paper" is simply too generic. 53's drawing app name is not strong either. Their iOS app is not called "Paper", but "Paper by FiftyThree". Their icon is not of paper, but of a napkin style rendering of "53". For all intents, the drawing simulation brand name is "FiftyThree". There was a brief moment in history when people thought "I wonder if 53 was acquired". That time has passed, and no one will mistake them from now on.
"Facebook Paper" is an alternative interface to Facebook.
"Paper by FiftyThree" is a drawing application.
Other than that they are both software, there's little room for confusion. 53 can get upset and write a blog post about it, but there is no substantive damage done. They'll probably sell more of their own product because of this.
"Facebook" is also pretty generic, but when you have enough well paid lawyers these things matter less.
Also, it is very unlikely that Facebook is attempting to benefit from 53's brand. Facebook wanted to call their product something descriptive, and the names collided. Compare this to any name involving "Facebook", which likely is attempting to benefit. Outside of a directly competing service, it's unlikely that the name of a product would include the word "Facebook". This makes "Facebook" less generic and more enforceable than "Paper".
Facebook was completely generic. Facebook used to be term for the paperback student profile books that universities produced. Facebook the website started as an electronic version of the paper facebooks.
Yes, Facebook WAS generic. They would have had a difficult time enforcing their brand from the start. Once a brand becomes a household name (which is admittedly a vague metric), the rules are different. See Apple, Windows, Sun, Sharp, Digital.
The standard isn't "household name", but rather "acquired distinctiveness" which in the US is defined under the terms of Section 2(f) of the Trademark Act
I am going to build a real time, location based, social messaging application that's based on connection graphs and utilize the latest Flash video technology. Oh and it's going to be ephemeral.
Whenever I hear the name "Paper" in a mobile / tablet context, I immediately think of 53, and I don't even have an iPad. If Facebook Paper is successful, that will no longer be the case (but it will hurt my perception of Facebook Paper in the meantime).
That said, I don't think 53 can claim any exclusive rights to the name, and I'm happy to see they haven't - they have just asked with exquisite politeness.
Whenever I hear the name "Paper" in a mobile / tablet context, I immediately think of 53, and I don't even have an iPad.
If I took ten people off the street, in San Francisco itself, and asked them who made an iPhone app called "Paper" a majority would probably already tell me Facebook. Perhaps one of them would know of 53, and probably not by name. Being in the mobile software community, we know of a lot of "successful mobile apps" that are not household names. I like and use 53's Paper, but 53 is not Exxon, GE, or Facebook. My friends and family have almost certainly never heard of it. A hundred million unverified global downloads does not equal a hundred million people who remember what your poorly branded, generically named app is called. I usually think of it as "that coffee stain icon with a generic name". Honestly, 53 might do better renaming it "53". Or "Studio 53" if they wanted to skim off of another brand that probably won't fight back.
Paper by FiftyThree is a good product, but a poor choice of name, and I still can't figure out why their app icon says "53" instead of "Paper".
That said, I don't think 53 can claim any exclusive rights to the name, and I'm happy to see they haven't - they have just asked with exquisite politeness.
No. 53 needs to claim exclusivity, claim that there is no possibility of confusion, or live with the reality that if people start calling Facebook Paper just "Paper", that Facebook will legally be able to prevent 53 from using the term. With trademarks it doesn't matter who has been using it longer, only who successfully enforces it.
"Paper" distribution is mostly based on a solid image of quality and friendliness, and spreads by word of mouth. A legal battle will destroy the former, and name confusion will hurt the later.
I imagine their plan has always been to enjoy the use Paper as long as they can, and rebrand when they can't anymore.
> 53 needs to claim exclusivity, claim that there is no possibility of confusion, or live with the reality that if people start calling Facebook Paper just "Paper", that Facebook will legally be able to prevent 53 from using the term. With trademarks it doesn't matter who has been using it longer, only who successfully enforces it.
That's a false trichotomy; the second and third branches are the opposite of how trademark law works. Please see my top-level comment for more details.
I don't think that 53 claiming there to be no confusion would in itself hold up in court, but I think it could help to inform the public's opinion about how the marks relate to each other, which might get factored into a decision later. I do think that a few years from now, if Facebook's product is successful, it will overshadow 53's brand. While it is technically true that two established marks would be evaluated on who was first, to me it is unlikely that a small developer would win in a suit against a $60B company. The orders of magnitude larger company would aggressively argue their merits and attempt to mitigate the smaller company's. Defending the mark at a time in the future where Facebook has any standing would probably bankrupt 53.
> to me it is unlikely that a small developer would win in a suit against a $60B company. The orders of magnitude larger company would aggressively argue their merits and attempt to mitigate the smaller company's. Defending the mark at a time in the future where Facebook has any standing would probably bankrupt 53.
Keep in mind that 53 would almost certainly demand a jury trial, as (IIRC) would be their constitutional right. Jurors tend to favor the little guy; that's especially true if the little guy's lawyers can convince the jury that the big guy behaved badly or even just negligently --- and plaintiffs' trial lawyers can be extremely skilled at doing just that. Under the Seventh Amendment to the U.S. Constitution, which governs civil (non-criminal) cases, a jury's findings of fact cannot be overturned unless the judge (or an appellate court) finds that no reasonable jury could have made those findings on the basis of the evidence of record.
I imagine there are more than a few plaintiffs' lawyers with suitable expertise who would be thrilled to take 53's case on a contingent-fee basis -- not least because they'd get a lot of publicity for doing so.
One not-unlikely outcome: 53 changes its product name, and Facebook pays 53 a significant amount of money, perhaps as an investment.
"If I took ten people off the street, in San Francisco
itself, and asked them who made an iPhone app called
"Paper" a majority would probably already tell me
Facebook."
Actually I think the majority would say "I don't know". Facebook Paper was released a few days ago, so how could the majority of people already know that Facebook makes it.
Furthermore, Facebook also has an app called Messenger and Camera•. They've been around awhile and I'd be surprised if you surveyed people that they would be able to tell you that Facebook makes either. For both, I would expect people to tell you that those are actually the generic name for any phone's build in messenging app and camera app, respectively.
TBH, I really which we'd move to a trademark system that makes all dictionary words untrademarkable. You should have to come up with an original name if you want protection and if you want the generic name you should be able to use it knowing full well that you will have no protection when doing so. Companies should not just be allowed to highjack single words like Paper, Camera, Messenger, Candy, Saga, etc. etc. etc.
That case never made it past the trial court, and ended in an out-of-court settlement in which Microsoft paid a paltry sum to make the problem go away, setting no legal precedent. Furthermore, the surrounding circumstances included an injunction from a Dutch court against Lindows.
The term "Windows" to refer to the GUI element was in common use from the 70s (the term WIMP was coined in 1980) long before Microsoft Windows was released.
Apple Computer vs Apple Corps (music) "co-existed" (I know of the lawsuits and agreements) at the time because one was an electronics manufacturer, and the other a record label.
Paper (53) is a drawing app, Paper (FB) is a news/FB wall magazine. Completely different markets. They should be able to co-exist.
The point isn't that they are from two different categories. The point is taht both of them are iOS apps! So the case exists.
As for Apple Computer and Apple Corps, obviously Apple never tried to be a Record label company. But when it started moving its operations into the music industry (i imagine that was the itunes time?) it got attacked by Apple corps. Before that it was peaceful co-existence. After that, it was Apple computer paying Apple Corps to keep its mouth shut and not bitch about it
The argument that it's an "app" its like saying a company that has a "website", or a company that uses the "telephone" can't share the same name. The app, like the website or telephone is the medium to the service/product.
Coca-Cola is not an English word describing generic real-world item. Paper is. I see your point (and to a degree agree), but your example is heavily flawed.
You might be surprised to learn that in the trademark law, common words like "paper" or "candy" can be used by multiple companies without them infringing on each other while "Coca-Cola" is way too specific for that.
Because "Coca-Cola" is a "fanciful name", employing strange capitalization and hyphenation. It's also a household name world-wide, which allows protection of somewhat generic names.
It's a matter of common usage. Coca-Cola isn't a universal descriptor of that particular kind of carbonated soft drink. The term for that (in the US) is a cola (which is why there exists a lot of *-Cola beverages).
The Coca leaf isn't used anymore due to the prohibition of cocaine.
"People are going to call the app by Facebook "Facebook Paper" because "Paper" is simply too generic."
I don't know where you're getting this idea from, every article I've seen has had a fine time just referring to the app as 'Paper'. All the marketing material is clearly just referring to this as 'Paper', I strongly strongly doubt Facebook want's anyone to refer to the app as 'Facebook Paper'. And I certainly don't think it's too generic, I saw the original 'Paper' app being referred to as 'Paper' just fine before Facebook came out with an identically named app.
Maybe they'll release it as Facebook Paper...
But to be honest, if there's a genuine app already bearing that name, they're better off going with something else...
I'm a big fan of Paper from 53 (not the most feature-filled drawing tool, but definitely the most pleasant to use) and respect that they wrote a polite request about this and tried to use this as a marketing opportunity rather than threatening legal action or citing some bizarre trademark argument where they claim to have the right to force others not to use a word. 53 comes across pretty well here thus far IMO.
Pfft. What a silly request. This is an entirely different application.
Should we expect an upcoming blog post from 53 complaining that Crayola has released a new product entitled "Pencil"?
If you want to protect your name, use a protectable name. If you're going to use an entirely generic name then deal with it... wait hang on... Dunder Mifflin just called... they want their name back too.
Whats more, Wacom also has an app called Paper, which does something very similar to 53 paper. Not sure which one was there first, but I wouldn't be surprised if it was Wacom.
Sorry, wrong developer, same point. The actual developer name is Contradictory. Timeline:
(1) Contradictory made "Paper"
(2) 53 made "Paper by 53", with the same function as "Paper" (just a lot better)
(3) Facebook made "Paper - stories from Facebook"
Insofar as FiftyThree is merely making a polite request as a matter of professional courtesy rather than threatening legal action, then I don't think your criticism applies. They didn't get nasty about it, they didn't cite some bizarre legal arguments where they claimed to forever own the word Paper. They just made a cordial request. I think that's entirely reasonable and makes them come across very good in this situation.
There's a very real possibility that FiftyThree is going to get impacted in all kinds of searches because of this. I don't begrudge them for taking advantage of a marketing opportunity that will get written about in the media that they'd be fools to not take advantage of. Their business could conceivably be on the line.
You're certainly free to disagree or feel all the sympathy you want to for Facebook here, but I don't think most people would see it the same way.
These are the risks of choosing a product name that is one of the most common items in the world. The benefits are familiarity and comfort; the risk is that anyone can start using it.
>If they make enough stink they can maintain their brand.
This is it exactly. Copyright and trademark are not the same thing, but many people confuse them. You have it right: With trademark the burden is on FiftyThree to defend it. The fact that they are doing that so politely makes me like them more.
So, when a big gorilla company uses the name of your well known (and with your use it already known to them) application / webpage that you've worked for years on, I wish you a good luck "trying to ride this publicity gravy train".
When a big company decides to use your name, your options are very limited. You can try to take the fight legal (and face the big company's entire legal team plus the distraction of suing a behemoth). Or, you can turn their massive publicity machine against them and set yourself up as an underdog.
The media loves David v. Goliath stories and being cast as David could have profound marketing opportunities for 53. Kudos to 53 for having the sense to handle this gracefully.
I, for one, do not think Facebook should change the name because these guys do not own the word "Paper." It would have been different if their app was called FiftyPapers and Facebook used the same name.
To be honest, I thought of FiftyThree first, too, when I heard the Facebook announcement. Reading between the lines on this blog post, it doesn't sound like FiftyThree has any legal claim or trademark to hold against Facebook (even if they wanted to litigate).
Facebook has already "gone live" with the Paper name—I think it's too late to change it. Whether it's malicious (are they "building their story" off FiftyThree's work?) or not ("Oops") is almost irrelevant here.
If 53 didn't register Paper as a trademark, they are pretty much SOL, right? If they did, it's pretty clear that Facebook's property creates confusion in the market. Trademark law seems pretty clear here, but IANAL.
IANAL either, but my understanding is that, in the US, they don't need to file a trademark as long as they can prove they were using the name in commerce first.
As far as international usage, that's a different story.
Humans have done just fine for a long time managing their own mental namespaces. Paper already means different things in different contexts before either of these apps - "I am writing a paper", "have you read today's paper?", "have your papers ready for inspection". There are also many different brands and types of paper with very different material properties and use cases.
Choosing an already in use word for any new publicly accessible thing complicates the global namespace a little more than it already is, but if it is the name you really wish to give it, sometimes a little distributed parsing overhead is better than the alternatives - trademarking "paper" or calling your product "Payper" instead.
The bigger your footprint becomes in the arena of the Internet, the more care it takes to make sure you are not stepping on other's IP. The problem with the Interwebs is that IP crosses so many silos and this isn't just a problem of name but of application of the use here. I can't see FB being more than apologetic to FiftyThree. As much as FiftyThree thinks they have just cause here - its more of a use / intention than it is the confusion with name. I highly doubt anything will come of this, because of the logical difference. Its an identity thing vs. market clash over the same product.
Companies, even hip web 3.0 companies, need to stop taking generic common nouns and declaring them trademarks. From Surface to Paper, these names are far too easy to confuse.
I like that Microsoft even stepped on their own toes with Surface. When something comes up about it sometimes I have to clarify if its about the tablet or the "big ass table"
One of Facebook’s board members is an investor in FiftyThree.
This line tells the whole story. This isn't just the case of a large company perhaps not noticing another product in the digital space with the same name. This is very deliberate, and the CEO comes across as flabbergasted with Facebook's decision.
Please don't monopolise language! If you tell me I cannot use the word Paper any longer, I resent that deeply, even if Apple and others have done that. Paper is not distinctive enough, not even very imaginative, 'creative' dare I say, of an app that claims to be all about creativity.
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[ 4.1 ms ] story [ 206 ms ] threadWhich app would you download from the appstore ?
I seriously doubt that 53 was the first company that used Paper in the name.
This seems much more like manufactured controversy for free press than anything else.
I'm guessing the name is a reference to 'newspaper'. Most people I know just refer to the newspaper as 'the paper'.
Paper > The Paper
fixed ;)
There are TWO billion-dollar storage companies with Box in the name. Now that's confusing.
I did work on a project once where most of the contributors referred to Google Drive as their dropbox, as well.
Lesson to self, avoid generic names.
I really like 53's Paper app, but I wouldn't like it any less if it were called Doodlepad, DrawPaper etc.
FB being the first $1 trillion company seems inevitable. FB is the borg of all borgs.
This is a big social faux paus on Facebook's part - at least among the developer community - but I really don't see either company changing their Paper's name. I imagine it'll go similarly to Google's Go name collision[1].
How should the little guy in these situations be legally protected? On one hand it's clear that "candy" shouldn't be trademarked, but "paper" is just as generic a term. Maybe the lesson here is not to name your product generic nouns and avoid the trouble all together.
1. https://code.google.com/p/go/issues/detail?id=9
Did it not turn out to be a legal issue because there was ultimately little commercial interest behind the Go![1] language?
Apple Computer had to pay Apple Corps, even though it seemed like the computer industry had little to do with the music industry at the time[2], so it is confusing how the conflict can be ignored until it goes away.
[1] https://en.wikipedia.org/wiki/Go!_%28programming_language%29
[2] https://en.wikipedia.org/wiki/Apple_Corps_v._Apple_Computer
Their brand name really manages to confuse me whenever it’s mentioned … but that just comes with the territory of picking something so generic.
So, yes, there is a question what someone is referring to when they talk about Square in the context of an app. That happened to me several times already, here on HN. I read some headline with Square in it, click on it and am confused why it’s not about website hosting.
I have little doubt that it is possible to build an extremely successful brand that no one confuses with anything else around a very generic term (just think of Apple), but if you want that super-generic word to work out for you (and those words can be cool to use, no doubt) you have to live with people confusing you until you pull it off. It’s a trade-off.
http://en.wikipedia.org/wiki/Facebook_(directory)
1. Abercrombie & Fitch v. Hunting World, 537 F.2d 4 (2d. Cir. 1976)
2. http://ipmall.info/hosted_resources/Germes_Newsletter/germes...
Source (could probably use something more legitimate): http://www.englishclub.com/vocabulary/common-words-5000.htm
There are over 2,000 records that include various forms of the word "target". Over 3,000 for "apple". Over 3,000 for "windows".
If you use a common word in a trademark you may be able to prevent others from using it for the exact same (or very similar) product, but you don't own the word outright.
Facebook might well be okay with a camera app called Target (though they might not be -- someone else may be using it for that purpose already). They would definitely be in trouble if they started a department store called "Facebook Target", though.
Yep , And to add more salt to wounds, I hate such diplomatic "Oh Shit! Did you guys existed too ? We just did not know answers".
MS can trademark Windows in conjunction with computer interfaces, but not if they decide to make windows that go in houses. That's where the common usage trademark issue arises. Also, if like kerosene the word becomes common usage then the trademark can be revoked.
The law is nuanced, there is no blanket ban on trademarking words in common usage.
"Facebook Paper" is an alternative interface to Facebook.
"Paper by FiftyThree" is a drawing application.
Other than that they are both software, there's little room for confusion. 53 can get upset and write a blog post about it, but there is no substantive damage done. They'll probably sell more of their own product because of this.
If it continues it might be funny for 53 to release Paper Facebook.
Also, it is very unlikely that Facebook is attempting to benefit from 53's brand. Facebook wanted to call their product something descriptive, and the names collided. Compare this to any name involving "Facebook", which likely is attempting to benefit. Outside of a directly competing service, it's unlikely that the name of a product would include the word "Facebook". This makes "Facebook" less generic and more enforceable than "Paper".
Yes, Facebook WAS generic. They would have had a difficult time enforcing their brand from the start. Once a brand becomes a household name (which is admittedly a vague metric), the rules are different. See Apple, Windows, Sun, Sharp, Digital.
And I am going to name it SnapYouTwitFace.
That said, I don't think 53 can claim any exclusive rights to the name, and I'm happy to see they haven't - they have just asked with exquisite politeness.
If I took ten people off the street, in San Francisco itself, and asked them who made an iPhone app called "Paper" a majority would probably already tell me Facebook. Perhaps one of them would know of 53, and probably not by name. Being in the mobile software community, we know of a lot of "successful mobile apps" that are not household names. I like and use 53's Paper, but 53 is not Exxon, GE, or Facebook. My friends and family have almost certainly never heard of it. A hundred million unverified global downloads does not equal a hundred million people who remember what your poorly branded, generically named app is called. I usually think of it as "that coffee stain icon with a generic name". Honestly, 53 might do better renaming it "53". Or "Studio 53" if they wanted to skim off of another brand that probably won't fight back.
Paper by FiftyThree is a good product, but a poor choice of name, and I still can't figure out why their app icon says "53" instead of "Paper".
That said, I don't think 53 can claim any exclusive rights to the name, and I'm happy to see they haven't - they have just asked with exquisite politeness.
No. 53 needs to claim exclusivity, claim that there is no possibility of confusion, or live with the reality that if people start calling Facebook Paper just "Paper", that Facebook will legally be able to prevent 53 from using the term. With trademarks it doesn't matter who has been using it longer, only who successfully enforces it.
I imagine their plan has always been to enjoy the use Paper as long as they can, and rebrand when they can't anymore.
That's a false trichotomy; the second and third branches are the opposite of how trademark law works. Please see my top-level comment for more details.
Keep in mind that 53 would almost certainly demand a jury trial, as (IIRC) would be their constitutional right. Jurors tend to favor the little guy; that's especially true if the little guy's lawyers can convince the jury that the big guy behaved badly or even just negligently --- and plaintiffs' trial lawyers can be extremely skilled at doing just that. Under the Seventh Amendment to the U.S. Constitution, which governs civil (non-criminal) cases, a jury's findings of fact cannot be overturned unless the judge (or an appellate court) finds that no reasonable jury could have made those findings on the basis of the evidence of record.
I imagine there are more than a few plaintiffs' lawyers with suitable expertise who would be thrilled to take 53's case on a contingent-fee basis -- not least because they'd get a lot of publicity for doing so.
One not-unlikely outcome: 53 changes its product name, and Facebook pays 53 a significant amount of money, perhaps as an investment.
Furthermore, Facebook also has an app called Messenger and Camera•. They've been around awhile and I'd be surprised if you surveyed people that they would be able to tell you that Facebook makes either. For both, I would expect people to tell you that those are actually the generic name for any phone's build in messenging app and camera app, respectively.
TBH, I really which we'd move to a trademark system that makes all dictionary words untrademarkable. You should have to come up with an original name if you want protection and if you want the generic name you should be able to use it knowing full well that you will have no protection when doing so. Companies should not just be allowed to highjack single words like Paper, Camera, Messenger, Candy, Saga, etc. etc. etc.
Paper (53) is a drawing app, Paper (FB) is a news/FB wall magazine. Completely different markets. They should be able to co-exist.
As for Apple Computer and Apple Corps, obviously Apple never tried to be a Record label company. But when it started moving its operations into the music industry (i imagine that was the itunes time?) it got attacked by Apple corps. Before that it was peaceful co-existence. After that, it was Apple computer paying Apple Corps to keep its mouth shut and not bitch about it
Perhaps you should try bringing to market a product called "Coca-Cola by Ynniv" and you can find out for yourself how this really works.
The Coca leaf isn't used anymore due to the prohibition of cocaine.
Randomish link from a quick search: http://dish.andrewsullivan.com/2012/02/25/coca-cola-is-still...
I don't know where you're getting this idea from, every article I've seen has had a fine time just referring to the app as 'Paper'. All the marketing material is clearly just referring to this as 'Paper', I strongly strongly doubt Facebook want's anyone to refer to the app as 'Facebook Paper'. And I certainly don't think it's too generic, I saw the original 'Paper' app being referred to as 'Paper' just fine before Facebook came out with an identically named app.
Should we expect an upcoming blog post from 53 complaining that Crayola has released a new product entitled "Pencil"?
If you want to protect your name, use a protectable name. If you're going to use an entirely generic name then deal with it... wait hang on... Dunder Mifflin just called... they want their name back too.
Cool company, great products, daft blog post.
(1) Contradictory made "Paper" (2) 53 made "Paper by 53", with the same function as "Paper" (just a lot better) (3) Facebook made "Paper - stories from Facebook"
You're certainly free to disagree or feel all the sympathy you want to for Facebook here, but I don't think most people would see it the same way.
If only. The entire post is to (a) differentiate their Paper from the FB Paper and (b) make an effort to protect what little trademark they have.
They're making it public so everyone can know "We exist, we were here first, please don't let FB steamroll us."
If they didn't do this, in six months FB lawyers would send a cease-and-desist telling them to stop using Facebook's trademark "Paper."
If they make enough stink they can maintain their brand. If they don't, then the 800-lbs Facebook gorilla will take away their brand identity.
This is it exactly. Copyright and trademark are not the same thing, but many people confuse them. You have it right: With trademark the burden is on FiftyThree to defend it. The fact that they are doing that so politely makes me like them more.
Look at all the publicity, they are on Reddit, news sites, twitter, HN... I've never heard of them until today, and I imagine I'm, not alone.
So, when a big gorilla company uses the name of your well known (and with your use it already known to them) application / webpage that you've worked for years on, I wish you a good luck "trying to ride this publicity gravy train".
The media loves David v. Goliath stories and being cast as David could have profound marketing opportunities for 53. Kudos to 53 for having the sense to handle this gracefully.
Facebook has already "gone live" with the Paper name—I think it's too late to change it. Whether it's malicious (are they "building their story" off FiftyThree's work?) or not ("Oops") is almost irrelevant here.
As far as international usage, that's a different story.
Choosing an already in use word for any new publicly accessible thing complicates the global namespace a little more than it already is, but if it is the name you really wish to give it, sometimes a little distributed parsing overhead is better than the alternatives - trademarking "paper" or calling your product "Payper" instead.
This line tells the whole story. This isn't just the case of a large company perhaps not noticing another product in the digital space with the same name. This is very deliberate, and the CEO comes across as flabbergasted with Facebook's decision.