
Facebook wins right to police “face-” trademark prefix - thinkcomp
http://ttabvue.uspto.gov/ttabvue/v?pno=91198355&pty=OPP&eno=64
======
thinkcomp
By way of explanation...

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.

~~~
shrughes
I would expect a product named Facemail to be something created by Facebook.

~~~
willchilcutt
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.

~~~
shrughes
It doesn't matter whether it's a majority. A third of people is a large
proportion.

~~~
amirmc
So what's your point? Does this mean Facebook has some right to the 'face-'
prefix? I strongly disagree.

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](http://en.wikipedia.org/wiki/Apple_Corps_v_Apple_Computer)

------
WestCoastJustin
Wonder how this affects Apple's _face_ time?

~~~
jeena
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.

~~~
dtparr
I'm unsure if you legitimately don't know or are being sarcastic, but if it's
the former, Wikipedia has a decent write-up.

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

------
aliston
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."

------
_dark_matter_
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...

~~~
darkarmani
Facebook has an email address, but I wouldn't call it email. Isn't it all just
in-app messages? Can you send email from facebook?

~~~
rlpb
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.

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dpcan
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.

~~~
cheald
Psh. That's what Unicode is for.

~~~
dpcan
And GUIDS. I should name my next game 6ef8f4a6-9f9d-468b-b44b-f2dbd38c068d

~~~
Raticide
My game uses the same 6ef8f4a6 prefix. Please stop using this ASAP. Thanks.

------
codereflection
So if some skater makes a site of skaters faceplanting, a phrase that's been
around forever, Facebook is going to come down on them.

This is why we cannot have nice things.

~~~
Bill_Dimm
Facepalm

~~~
ionwake
lol

------
hyborg787
"Facebook wins right to police “face-” trademark prefix" is a misleading
headline.

~~~
vog
Care to explain?

~~~
DanBC
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.

~~~
thinkcomp
No, just all uses of FACE- and -BOOK on the internet.

[http://ttabvue.uspto.gov/ttabvue/v?pnam=Facebook,%20Inc](http://ttabvue.uspto.gov/ttabvue/v?pnam=Facebook,%20Inc).

~~~
DanBC
But you lost because the product was identical (messaging) in the same area
(social networking).

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.

------
3stripe
Facepalm

~~~
1st1
(tm)

------
DanBC
I genuinely don't know what you were expecting.

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
facefucking is now trademarked by facebook?

~~~
jayferd
I assume you're being facetious (tm).

~~~
wnevets
its quite the facet to my personality.

------
balanon
There go my ideas: FaceStarter, FaceBnB, FaceBox, Face37Signals.

But still a go on SnapFace.

------
mikemoka
And now corporations try to steal common words from people, even the word
"Face", it will be interesting to see how hackers groups will react to this.

------
arb99
Wait till they trademark their blue colour like these
[http://www.businessinsider.com/colors-that-are-
trademarked-2...](http://www.businessinsider.com/colors-that-are-
trademarked-2012-9?op=1) ...

~~~
epmatsw
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.

~~~
johnward
But caterpillar and john deere compete in the same market and have a similar
shade of yellow...

------
ferdo
Next up, they'll go after anything with 'book' in the name.

~~~
benburleson
They don't already?

~~~
kmfrk
No, that's Amazon.

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shaunxcode
Thank goodness they aren't going after the -face suffix or the IT Crowd would
be in trouble with friend-face.

------
Apocryphon
Does Facebook even have any products or features with the "face-" prefix?

~~~
thinkcomp
Excluding Facebook, no.

------
austinl
Could you imagine if they also won the right to "Insta-" as well?

------
dudurocha
That's similar to Zynga trademarking "with friends", right?

~~~
jmtame
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...](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
:facepalm:

------
dram
Try renaming it gfacemail and hiring 50 Cent as a partner.

------
Ackley
wow... next you will be able to trademark letters

~~~
johnward
Like iPhone and iPad? Didn't Apple try to enforce the "i" trademark. How did
that end up?

