
A letter from Paper (FiftyThree) to Paper (Facebook) - henryaym
http://news.fiftythree.com/post/75486632209/every-story-has-a-name-fiftythrees-story-began?new_url=true
======
ynniv
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.

~~~
jimwalsh
"Windows", "Apple", aren't too generic. This is perfectly reasonable for 53 to
ask this of Facebook.

~~~
Touche
I suggest you read up on Microsoft v Lindows before you use that example.

~~~
nknighthb
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.

------
petenixey
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.

Cool company, great products, daft blog post.

~~~
throwaway420
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.

~~~
pron
Making a cordial request about it to Facebook is one thing; publicizing it
(probably in an effort to shame Facebook) is another.

~~~
throwaway420
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.

~~~
qq66
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.

------
wavesplash
There are some great opinions posted so let me add some data from uspto.gov
(use 'trademark search' from the menu) and a touch of what I understand of
Trademark law after filing a few myself:

53 was granted a US Trademark on the phrase 'Paper by FiftyThree' on December
2013 for trademark categories 21 23 26 36 38 and it appears international
category 9 with a first-used-in-commerce claim of March 2013.

53 are obligated to enforce their mark in those categories otherwise they risk
losing it. This is the same reason Facebook goes after anything with 'face or
book' that even vaguely seems similar. If they don't they risk losing the
Facebook mark.

The law sides with the trademark holder as long as they enforce the mark.

As many people have mentioned, 'Paper' is generic and 53 didn't get the word
'Paper' by itself. It was granted the mark 'Paper by FiftyThree'. Since
Facebook's app isn't called 'Paper by Facebook' this leaves some wiggle room
if FB wants to challenge the claim if it heads to court. Facebook has deep
pockets and good lawyers, so perhaps they've already calculated the risk and
is willing to fight in court. 53 may not be able to afford that fight (cash or
distraction wise).

TL;DR: 53 is obligated to enforce their Trademark and the letter to Facebook
is a manifestation of that obligation. Unfortunately their mark isn't just on
the word 'paper' so it will be interesting to see if this fades away or the
parties head to court.

~~~
seandougall
> 53 is obligated to enforce their Trademark and the letter to Facebook is a
> manifestation of that obligation.

But the _open_ letter is not. A simple C&D would have protected them;
publishing it is purely about marketing.

~~~
wavesplash
Agreed, seems an intentional move from the marketing playbook: If goliath gets
news, pick a public fight when you're David. A very cheap investment for that
level of exposure.

------
christiangenco
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.

1\.
[https://code.google.com/p/go/issues/detail?id=9](https://code.google.com/p/go/issues/detail?id=9)

~~~
rz2k
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.

[1]
[https://en.wikipedia.org/wiki/Go!_%28programming_language%29](https://en.wikipedia.org/wiki/Go!_%28programming_language%29)

[2]
[https://en.wikipedia.org/wiki/Apple_Corps_v._Apple_Computer](https://en.wikipedia.org/wiki/Apple_Corps_v._Apple_Computer)

------
nikcub
The irony here is that Facebook are extremely aggressive about protecting
their own name. They have sued other companies for using generic words as
_part_ of their names, like 'face' or 'book' or 'wall'.

[http://articles.latimes.com/2010/aug/25/business/la-
fi-0826-...](http://articles.latimes.com/2010/aug/25/business/la-
fi-0826-facebook-suit-20100825)

------
thrush
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.

~~~
pron
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.

~~~
austenallred
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?

~~~
pron
If Square whines about someone else using the name, I will say the same thing.
It's a tradeoff, and they've made their choice.

~~~
thrush
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.

------
throwaway420
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.

------
dctoedt
It's helpful to analyze this the way a U.S. court likely would. Suppose
hypothetically that the following are true:

(A) that the mark PAPER is protectable for what 53 sells -- and I think that's
highly likely; PAPER in this context strikes me as a "suggestive" and
therefore protectable mark [1]; and

(B) that 53 was the first user of the mark; and

(C) that there's a "likelihood of confusion" about the origin, sponsorship, or
endorsement of the companies' products or services -- this entails looking at
seven or eight factual questions, namely the "strength" of the mark; the
proximity of the goods; the similarity of the marks in appearance and/or
sound; any evidence of actual confusion; similarity in marketing channels
used; the type of goods and the degree of care likely to be exercised by the
purchaser the junior user's intent in selecting the mark; and the likelihood
of expansion of the respective product lines [2].

In that situation, as the junior user, Facebook would (or should) be liable
for infringement.

Another point: 53 can be damaged by "reverse confusion," namely people
thinking that _53_ is the one that's ripping off _Facebook_ [3].

[1]
[http://tmep.uspto.gov/RDMS/detail/manual/TMEP/Oct2012/TMEP-1...](http://tmep.uspto.gov/RDMS/detail/manual/TMEP/Oct2012/TMEP-1200d1e6993.xml)

[2]
[http://en.wikipedia.org/wiki/Trademark_infringement](http://en.wikipedia.org/wiki/Trademark_infringement)

[3] [http://definitions.uslegal.com/r/reverse-confusion-
trademark...](http://definitions.uslegal.com/r/reverse-confusion-trademark/)

------
atacrawl
_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.

------
dpcheng2003
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.

~~~
freehunter
I don't know how often I hear at work "Put it in my dropbox", where "my
dropbox", of course, refers to Box.com.

I did work on a project once where most of the contributors referred to Google
Drive as their dropbox, as well.

------
nicolethenerd
When I first heard about Facebook's Paper, I wondered how that conversation
could have possibly gone down...

"So we're building this great new experience, and we want to call it Paper..."

"Isn't there already an incredibly popular mobile application called Paper?"

"So?"

Some variant of this conversation must have happened, right? It's not like
nobody at Facebook has heard of 53 - how did this name ever get out the door?

It seems like most of us here on HN think of 53's Paper when we think of 'app
called Paper' \- perhaps this isn't the case in the overall consumer market
(but then again, Paper - 53's, that is - was once featured prominently on
Apple.com - not just the app store, but the main website) - but to me at
least, it feels like Facebook is using a name which is 'already taken'.

------
iambateman
Might I suggest that this is not the first time Facebook has drawn the ire of
the tech community and won't be the last.

It seems Facebook simply doesn't care. FiftyThree's complaint will blow over
in a few days.

 _However_ , FiftyThree is signing up plenty of new users from the story.
They're probably genuinely upset but this won't be their death and it might
even be a good thing. I'd never heard of Paper beforehand.

------
shanselman
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.

~~~
jonny_eh
I recall people complaining about all the made up words being used for company
names from the web 2.0 era.

------
pirateking
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.

------
untilHellbanned
I feel for FiftyThree but the ship of anyone caring of FB's missteps has long
sailed.

FB being the first $1 trillion company seems inevitable. FB is the borg of all
borgs.

~~~
personlurking
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".

------
BryantD
There was a drawing app called Paper in the App Store in October 2011, five
months before 53 released their app. It doesn't look very good, but that's not
the point.

[https://itunes.apple.com/us/app/paper/id474402870?mt=8](https://itunes.apple.com/us/app/paper/id474402870?mt=8)

------
drfloob
All respect issues aside, generic names like this are a pain in the ass. "go"
(google) and "react" (facebook) are similar. For example, Twitter-folk have
taken to using #ReactJS to mean Facebook's React UI framework, but react.js[1]
has been around a while already, and it does some similar stuff (if you squint
a bit).

You can't mention or search for them without barfing out the company name, and
sometimes a specific property alongside to be unambiguous about your meaning.
It makes finding discussions and blog posts harder because people don't have a
common language for these poorly-named things.

It just seems like these companies are shooting themselves in the foot. Is
natural word-of-mouth growth no longer a concern?

[1]: [http://reactjs.com/](http://reactjs.com/)

------
scotthtaylor
Can both not exist? I don't see how there could be overlap or confusion from
potential customers.

~~~
ig1
"I always use Paper on my ipad for all my pictures, you should check it out"

Which app would you download from the appstore ?

~~~
scotthtaylor
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".

~~~
azinman2
Exactly. It's a single generic word.

------
bikamonki
The world of app names is weirdly. Obviously you cannot put up an app named
Facebook but most likely you can put one named FB Calculator. The way I see
it, _parts_ of an app name can be protected, others are generic. It is like
subdomains: news.ycombinator.com cannot ask news.fiftythree.com to stop using
_news_.

Anyhow, what's the name of that FB Android app that turns your phone's desktop
into a FB desktop? Or was it iOS app? What exactly was it anyway? FB OS?

Don't worry Paper53, PaperFB is probably another fluke, a quick yet clumsy
response to Medium's menacing growth, to the _wall 's_ irrelevance, to the
teens running away....

~~~
arthurcolle
its called Facebook Home

------
Finster
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.

~~~
tomweingarten
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.

------
BrownBuffalo
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.

------
k-mcgrady
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.

~~~
sliverstorm
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?

~~~
fleitz
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.

~~~
sliverstorm
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.

------
rokhayakebe
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.

------
basseq
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.

------
antr
_> There’s a simple fix here. We think Facebook can apply the same degree of
thought they put into the app into building a brand name of their own._

It seems to me that both FB and 53 applied the same degree of thought.

IMHO, I find it absurd that private companies want to make common words their
own. Couldn't the "degree of thought" 53 put into their naming process led
them to think that "paper" was an extremely generic word and this conflict was
bound to happen?

------
malandrew
Since the Apple store rankings are intentionally opaque and controlled by
Apple for its own gain, I secretly hope that the Apple artificially ranks 53
Paper above Facebook Paper. At the end of the day Paper has been an excellent
app for the Apple ecosystem and it would be a nice way to say "thanks" to 53.
If this happens, then Facebook's use should help 53 get more downloads since
most users will go along with the first result in the store.

------
qq66
Yesterday: Vitriol slung at King for trying to trademark "Candy." Today: Much
more sympathy for 53 attempting the "trademark of public opinion."

~~~
Gigablah
That's to be expected. In both cases vitriol is directed at the Goliath.

------
micahgoulart
This app is very unrelated to Facebook as we know it: our friends and their
content. That is just one part of the app. It's more a curated news app on the
whole.

Either Facebook released this as a project their engineers did to test out
interfaces or they are collecting data from this app about what is shared and
what content is viewed to improve their own feed algorithms.

------
tomasien
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?

~~~
sliverstorm
Right, it's simplified Facebook. Facebook with all the extra bits removed. The
hardback _book_ reduced to the _paper_ back...

~~~
tomasien
Yeah, I mean it's not the worst, it's just not like, "MUST DEFEND THIS AWESOME
NAME" level IMO.

------
jawaddeo
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.

------
covercash
The actual app titles from the App Store seem different enough to me, and I'm
a huge fan of FiftyThree.

Paper by FiftyThree (FiftyThree, Inc.)

Paper - stories from Facebook (Facebook, Inc.)

Another distinction to keep in mind is FiftyThree's Paper is iPad only and
Facebook's is iPhone only (although it will install on iPad).

------
conductr
53 has chosen to use generic single word nouns for their products. Paper,
Pencil, Book. When you do that, you do not deserve the consideration the
author is expecting from Facebook.

Yes it may cause confusion, but they should have used unique names for their
products if they wanted the differentiation.

------
cheshire137
Over here in Android land, there's no confusion at all, because neither app is
in the Play Store. :P

------
Touche
No, you don't own the word Paper.

------
sleepyK
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...

~~~
freshyill
It's listed as "Paper – stories from Facebook" on the App Store.

------
SimonDawlat
Search for "Paper" in the App Store? Problem solved.

------
plusbryan
Won't this only benefit FiftyThree now that many more people are searching the
App Store for "Paper"? Seems like a victimless crime.

------
fuzzywalrus
I admire FiftyThree but this ship has sailed. Unless FiftyThree is willing to
lawyer up, I can't imagine anything changing.

------
cx42net
"And that is why, folks, we are proud to announce our newest product :
Facebook".

That should do it ;)

------
valvoja
It's like Apple Inc and Apple Corps.

Lesson to self, avoid generic names.

~~~
james33
The generic name seems to have worked out well for Apple though, hasn't it?

~~~
notatoad
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

~~~
MartinCron
Apple Corps has nothing to cry over, I am sure.

------
amjaeger
next they're going to write to wb mason that they should change the name of
their product to "printer sheet" or something like that....

------
Aardwolf
I don't get it, does this involve actual paper?

------
jrockway
See also: Microsoft Windows vs. X Window System.

------
tethis
Sweet jesus I cannot read that font.

------
etanazir
is this trademark 'descriptive', 'distinctive', or 'generic' ?

