Trademark Infringement? Facebook Versus Teachbook

Does Teachbook infringe the Facebook trademark?

Facebook recently filed a complaint against Teachbook.com, a social networking site for teachers, for alleged trademark infringement in the Northern District of California.  Specifically, Facebook argues that Teachbook misappropriates the term "book" from its regsistered trademark.  The complaint further alleges that Teachbook dilutes the company's famous mark and causes confusion as to the source of Teachbook.

This excerpt from the complaint summarizes the argument:

The 'book' component of the Facebook mark has no descriptive meaning and is arbitrary and highly distinctive in the context of online communities and networking Web sites," the complaint explains. "If others could freely use 'generic plus BOOK' marks for online networking services targeted to that particular generic category of individuals, the suffix 'book' could become a generic term for 'online community/networking services' or 'social networking services.' That would dilute the distinctiveness of the Facebook marks, impairing their ability to function as unique and distinctive identifiers of Facebook's goods and services.

Analysis

All of the causes of action are predicated on the argument that the "book" portion of the trademark has attained secondary meaning and is therefore distinctive.

That is not so clear.  Perhaps within the context of online communities, "book" does uniquely identify the company's products and services when it is combined with "face".  But "book" might signify origin only when it is combined with "face."

Paragraph 26 of the complaint (First cause of action: Federal trademark infringement) asserts that the instantaneous nature of internet navigation increases the risk of confusion.  Maybe, maybe not.  That is a factual question.  Regardless, this argument seems quite important to the company's position.  The dilution causes of action raise factual questions as to consumer confusion.

Perhaps Facebook did not have to separate "Face" from "book" in its argument.  Commercial impression counts, and maybe Teachbook is attempting to achieve the same commercial impression.  That supports the contention that Teachbook causes confusion as to its source.

Apparently, though, Facebook has a broader legal strategy in mind for asserting its intellectual property.  Around the same time that the company filed the complaint against Teachbook, TechCrunch reported that Facebook is attempting to register "face" as a trademark.  Although the company has not yet filed for the mark "book," it is effectively trying to claim both "face" and "book" as marks.  If this is accurate, will Facebook and Apple clash over Apple's FaceTime mark?  Further, this raises the flip side of the question above: Does "face" have secondary meaning unless it is combined with "book"?

At the least, the complaint will likely survive a motion to dismiss because there are questions of fact.  It will be difficult for Teachbook to get rid of this complaint that quickly.  Teachbook promises to fight the suit.

What do you think about Facebook's lawsuit and legal strategy?

Douglas Y. Park

Twitter: @DougYPark

If you enjoyed this post, please subscribe to the blog by RSS feed or email.  You can find the subscription option on the sidebar to the immediate right.  Also, click the Facebook Like button below and Like the DYP Advisors Facebook page using the option on the far right sidebar.