
Fraud Charges Against Facebook, Sean Parker, Mark Zuckerberg to Stand - thinkcomp
http://ttabvue.uspto.gov/ttabvue/v?pno=92049206&pty=CAN&eno=14
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bdr
From the plaintiff's website: "Inventors of 'The Facebook,' the first
universal face book at Harvard University."

"Think Computer Corporation today filed a Petition to Cancel with the United
States Patent and Trademark Office regarding Facebook, Inc.'s registered
trademark on the term "FACEBOOK," after Think Press was denied the right to
advertise its upcoming book, Authoritas: One Student's Harvard Admissions and
the Founding of the Facebook Era for trademark reasons."
[http://www.thinkcomputer.com/corporate/news/pressreleases.ht...](http://www.thinkcomputer.com/corporate/news/pressreleases.html?id=31)

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irinotecan
It's difficult to follow, and I haven't read all the legal proceedings, but
here is what I have gathered:

* Think Computer coined the term "The Facebook" to describe an in-house portal system at Harvard University which they built, back in 2003.

* At some point Mark Zuckerberg registered "thefacebook.com" and started making a competing student portal. He later renamed this to facebook.com (thefacebook.com still redirects to facebook.com to this day)

* Think Computers was content to let sleeping dogs lie for the most part, but decided that they wanted to publish a book about their portal system and the title of the book contained the words "the facebook".

* Facebook.com sued Think Computers for trademark infringement and got advertisement for the book blocked.

* Think Computers countersued facebook.com, claiming fraud in their trademark, because Mark Zuckerberg was classmates with Think Computers CEO at the time and knew that he had previously coined "the facebook" for his portal system.

* Facebook tried to get the fraud count removed, presumably because if they are found guilty, penalties may extend beyond the loss of the trademark "Facebook".

* The court just ruled that the fraud count will not be removed for the upcoming trial.

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gojomo
I heard there was a printed student guide that was informally called 'the face
book' at Harvard (and possibly other places) before any of these online
projects got underway.

If so, I suspect the key question is whether that term can be repurposed to
become a trademark for vaguely similar, but broader, commercial online
services, and which actions of Zuckerberg and others may have served to create
a defensible claim on that mark.

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gojomo
Maybe ThinkComp and Hubert Chang can start a company together, "The Real
GoogBook".

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rantfoil
Fraud charges? This looks like a link to a proposal for cancellation of
Facebook's trademark.

Aaron, can you provide some commentary here?

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thinkcomp
There were three counts in the initial Petition to Cancel: priority of use,
genericness, and fraud against the USPTO. Facebook's attorneys protested very
strongly and repeatedly to have the fraud count removed, but with this ruling
the USPTO denied both of Facebook's motions.

~~~
jhancock
This does seem odd. As someone who has just filed a trademark, I can say the
USPTO is "paid money from the filer" to do a search for name conflict. It is
the responsibility of the filer to also search for reasonable conflict. But
the purpose of the trademark office and the fees you pay it are for this
search.

There must be something really wrong here for fraud charges to stand.

~~~
MaysonL
Fraud here seems to mean material false statements in the trademark
registration application, nothing more.

~~~
jhancock
My point is that the trademark registration process is VERY simple. There is
not much you can do to commit fraud. You fill out a simple form and submit
your name and supporting material such as logo to a search. If the search,
based on the category of goods and service you select, is deemed not in
conflict with already registered product or services, you get the nod and you
are registered.

The whole point of the registration process is you are paying the USPTO a fee
to do a search to avoid conflict. Yes, there is an assumption that you are not
applying for something you know already is registered by someone else. But the
point of the search is a safeguard for this.

I am very interested to understand the details of the fraud aspect of this
claim. I am also interested to see how the USPTO's paid search process didn't
catch the conflict.

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marcus
Part of the registration process is that you testify that don't know of any
prior existing uses of the trademark by 3rd parties in the field. If you are
aware of existing prior uses of your trademark you might have committed fraud
in your application.

