Facebook has recently started attempting to register the word "face" as its trademark with the United States Patent & Trade Mark Office (USPTO).
Technically, no individual may solely be vested with the exclusive rights on the use of the word "face", it being a common word in the English Language. However, Facebook's claim may be accepted if they are able to show that the word "face" has become distinctive in respect of the services provided by applicant by way of continuous use over a considerable period of time.
Now, it makes sense to apply for the mark 'Facebook' as a whole using the aforesaid arguments and the claim that 'Facebook' as a whole is a newly coined term using two English words in conjunction with one another, which were unused in relation to the given services of the applicant, and that tremendous cross-border reputation has accrued in respect of the same in favour of the applicant. In fact Facebook would be well within its rights to do so and thereby diligently protect its valuable intellectual property. What is unsettling however, is Facebook's insistence on getting the word "face" and probably later the word "book" registered in its favour. The effect of such registration is to say (loosely, depending on other facts and circumstances) that any instance of the use of the word "face" in relation to online service providers (regardless of the nature of such service) shall be held to be an infringement of Zuckerberg's great intellectual property that is Facebook. Notwithstanding the unwanted precedent it shall inevitably set which is likely to be followed by various other multinationals applying for exclusive rights on regular words of the English language.
So far, even without a valid registration, Facebook has successfully threatened and gotten a travel website to change its name from Placebook to TripTrace. They are also likely to initiate legal action against Teachbook, which is an online portal for teachers, for the use of the term "book". This reveals the sincerity of their intentions of following up the application on "face" by another for "book", probably using their first application as a precedent.
While it is unlikely that "face" will be granted registration one can never be too sure when it comes to financially resourceful multinational corporations. In any case such an application or claim is an example of a humongous ego and arrogance on the part of Zuckerberg & Co. that probably believes itself to be the sole reason for the existence of Law and not the other way round. I hope such arrogance is nipped in the bud by the USPTO.
12 comments:
You've become an IP whore.
Welcome to my world.
Maybe with a very narrow specification - "online social networking services of a general nature"
@ shamli : what to do? such is ze life.
@ rahul : even then ya, an intensive registration portfolio on the mark "facebook" having registration across classes and jurisdictions would serve Zuckerberg et al. equally well if not better. then why go after 'face' and 'book'separately other than to show that they can do what the want.
Ok, but I am not so sure its unlikely to be granted. It has clearly acquired distinctiveness and is not descriptive of the services provided. There are hence no absolute grounds for an objection.
true that. neither on relative grounds. however i do not see how "face" has gained distinctiveness enough to give facebook an exclusive right on the word itself, esp when it may be considered common to trade as a prefix. namely http://www.faceindia.org ,http://www.facecouncil.org/, http://www.facerecognitionsolution.com/, http://www.facedetection.com/ or for that matter even.. http://www.bnl.gov/face/ (does not have face in the name but check the homepage)
none of the said sites have any connection to Facebook. granting zuckerberg a registration on FACE would in effect force these sites to change their name or enter into a settlement with facebook. which is undesirable, i hope.
oh sorry, by "true that" i meant FACEBOOK has gained distinctiveness, not FACE. it can't in my opinion for the aforesaid reasons.
I disagree with the reasoning. None of the sites listed provide "Online Social Networking Services" which is the only class of services "Face" is distinctive for. Therefore these websites cannot be made to change their names on this ground. Since they all seem to be viable websites aimed at providing a genuine service, neither can they be struck off on the basis of a domain squatting claim (opportunistic registrations).
rahulda, i think you'll agree with me when i claim that one's past actions is a valid precursor to its future acts. after all you can always trust a dishonest man to be dishonest. Jack Sparrow said that.
in view of the same lets take a look at facebook's existinf trademark portfolio with the USPTO. they have over 120 reg/appl that are still subsisting.
among them are marks like FACEBOOK, F (label), FB, O., FACEBOOK INSIGHTS, FACEBOOK ADS and FACEBOOK FOR GOOD. All presumably honest adoptions of Facebook Inc. however lets take a look at the nature of goods and services they have been registered for.
FACEBOOK word mark is registered for (thru separate applications)
1."Clothing for men, women and children, namely, bottoms, pants, loungewear, sweat pants in IC 025."
2."Providing social services and information in the field of personal development, namely, self-improvement, self-fulfillment, charitable, philanthropic, volunteer, public and community services, and humanitarian activities in IC 45."
3."Insulating sleeves for beverage cans; insulating sleeves for beverage bottles; portable can coolers; portable bottle coolers; thermally insulated containers for beverages in IC 21."
4."Picture frames in IC 20." (WTF??!?)
5."all purpose sports bags, all purpose carrying bags, bags and hold-alls for sports clothing, tote bags, book bags, carry-all bags, traveling bags; umbrellas; briefcase-type portfolios in IC 18."
and many more for which this space is too short. but you can peruse their reg/appln online at http://tess2.uspto.gov/bin/showfield?f=toc&state=4008:f2csgu.3.1&p_search=searchss&p_L=50&BackReference=&p_plural=yes&p_s_PARA1=live&p_tagrepl~:=PARA1$LD&expr=PARA1+AND+PARA2&p_s_PARA2=Facebook,+Inc.+CORPORATION+DELAWARE&p_tagrepl~:=PARA2$OW&p_op_ALL=OR&a_default=search&a_search=Submit+Query&a_search=Submit+Query by conducting a proprietor search.
my point is NOT that face is not distinctive in respect of "Online Social Networking Services" but rather my point if the fear of multi class regitrations of the words FACE and BOOK separately and in conjunction with other terms over a period of say 3-4 years, in which your registration portfolio shall inevitably be large enough to challenge any mark/domain name using the word FACE and/or pre-empt other honest manufacturers from adopting such word in their own mark, albiet bonafide.
(ps: also although the previous example ought not to be struck off on grounds of opportunistic registrations, that does not provide any guarantee of FB using such new built FACE tm portfolio to bully this lesser known traders into lopsided settlements. its survival of the fittest out there after all and im just the guy who wants more of them to survive rather than one large monolith)
I think we are speaking at cross purposes here: I agree that Facebook will try to get as wide a registration as possible and its application should, and hopefully will be, rejected for 99% of the goods/services applied for. I was only making the point that legally speaking it will be darned difficult to deny then a registration for a narrow specification like "Online Social Networking Services".
thats the scary part, for im sure Facebook is obviously aware of the fact that it is extremely difficult to deny them registration upon such a narrow classification (unless there's an opposition) which may later be used as a stepping stone for much broader registrations in the long run. thereby their ultimate purpose is served. hence the title "Corporate Arrogance".
however, im unable to see a way out of the present predicament that you've pointed out, other than the USPTO finding some way of refusing the application in its nascent stage.
this lawyer talk, however mind-boggling/numbing, is highly entertaining. i stand by my wish to have rorschach and rahul saha argue a case at pc with shubhoda (due to seniority in age) as judge. that would make for quite a night.
the topic of discussion i will leave up to the lawyers. this is my wish for a 30th birthday present. there are a little under 5 years left so you both have enough time to work on it. please proceed as needed.
saala tere liye hi toh hum zinda hain bhai. aur kuch?? chai paani??
mrs.parik will give you your 30th b'day present. and no mrs.parik is not kalyani aunty :P
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