Facebook Sues Teachbook: Why Is The Media & The Blogosphere So Upset? Will This Help To Change Trademark Laws?

The media seems to be ripping Facebook.com apart for defending its trademark rights against a new site TeachBook.com.

Mainstream media, welcome to our world.

Facebook.com filed suit again a new site called TeachBook.com this week and I have seen over 200 articles mostly all of which are highly critical of Facebook for the suit.

Moreover Facebook.com has apperately taken over a previous trademark application and is trying to get the word “Face” trademarked.

Some of the blogs are saying that Facebook is trying to corner the market on any domain starting with the word “Face” while other blogs say Facebook is trying to corner the market on any domains ending in “Book”.

Here is what others in the media are saying:

The Examiner.com said:

“Facebook is suing upstart technology company Teachbook.com.  This looks like a “fail” for Facebook, and the giant social media company risks looking like a big bully on this one.”

The Huntington Post writes:

“Going after a small website intended to help teachers with lesson plans is just not good PR, no matter how you slice it. The company’s aggressiveness in protecting its trademark against Teachbook might strike many people as trademark bullying. And if there’s one lesson that is true both in trademark and in life: no one likes a bully”

Even CNN.com got into the act, saying:

“Facebook’s…fight over “book,” on the other hand, has been more of a David vs. Goliath saga.”

Facebook, is suing Teachbook for  federal trademark dilution, trademark infringement and unfair competition.

The complaint, filed in a California district court last Wednesday, alleges that Teachbook is “riding on the coattails of the fame and enormous goodwill of the Facebook trademark,”

Teachbook, based in Illinois, hasn’t even launched yet, but according to its homepage says it is a “teacher’s community” where users can share lesson plans and seek advice from fellow educators.

“Teachbook has created its own competing online networking community in a blatant attempt to become Facebook ‘for teachers,’” the suit alleges.

While Facebook doesn’t claim to own rights to the word “book,” it argues “if others could freely use ‘generic plus BOOK’ marks for online social networking services …. that would dilute the distinctiveness of the Facebook marks.”

The site even allegedly said it was going to launch as the Facebook for teachers until it took it down after the suit was filed.

Of course those in the domain industry, this is a familiar story.

Trademark holders trying to expand their rights to use the law to cut off all competition.

The outrage on this case is important as its there types of case that put the spotlight on domains and trademark laws.

It takes these types of cases, as well as the attempt of Facebook to claim ownership of any domain starting in “Face” or ending in “Book” to get the trademark laws amended to reflect the reality of internet business world.

Its 2010 the time has come to review and change existing trademark laws.

Comments

  1. James says

    It looks like a registered in bad faith as the ‘book’ ending doesn’t really describe the service but does look like it’s imitating facebook to a degree – social networking site ending in ‘book’. I see this as a genuine case for FB. Am I missing something here?

  2. MHB says

    James

    So you would agree that no other social networking site can start with the word Face or end with the word book even if its has a fundamentally different business, such as this site which is restricted only to teachers.

    If that is true then there can also be no other social networking sites starting with “My” or ending with “space”

    If that is true then they can be no other sites on the internet offering video clips which start with “You” or end with “Tube”.

    I think that is way to broad for the internet which is so huge.

    Problem is the last trademark laws written on the internet were done so in 1999.

    Over 10 years ago.

    That’s a lifetime in internet years.

  3. says

    interesting. i had a site up in 1999 for awhile on makebook.com. didn’t work and i ended up selling the domain to an australian company two years ago for xx,xxx. do you think i have a claim on some of facebook’s 250 billion dollar valuation?

  4. James says

    MHB

    I think it can be argued that FaceBook is less generic than either MySpace or YouTube with regard to their respective usages, which ought to give it diffeent status regarding it’s TMs for certain classes.

    Also, who’s to say it’s only for teachers – next year it could be different. If the respondant wins this, then the flood gates are open for anyone, domainbook; doctorbook; lawyerbook….

  5. says

    I reserved SpaceBook.com for the purposes of social networking in 1999 – per this claim should I be expecting a demand letter from MySpace or FaceBook or both ? – and somewhere in that you have your answer if Facebook has exclusive use of the term “book” in a social networking forum.

  6. MHB says

    Brian

    Who knows what they will go after next

    Probably will depend on your use of the domain.

    Interesting to see one of the domains they haven’t gone after yet, is one of the potentially most offense to them, FuckBook.com

  7. says

    Mike,
    Oddly I am not sure how much FuckBook competes with Facebook – and if facebook claims they do dilute their TM then that puts facebook in bad light as a sex social networking site.

    I would imagine facebook’s brain trust has thought this one thru already – hoping to get some “book” “monoply” momentum with others before swiftly sweeping fuckbook under the rug with no fanfare

  8. says

    When you go to a wedding, funeral or most “inivation” events, we are asked to sign to sign the “book” or “guest book”. My point is “Book” is a lot more intuitive to social networking and social gatrherings than facebook wants to admit

  9. James says

    MHB

    Tube is another name for a TV, has been for years (in the UK anyway) and so has relevancy to TV/video.

    What relevancy did ‘book’ have to socialising prior to Facebook?

  10. MHB says

    James

    This is not a made up term like Verizon or Yahoo which had no real meaning before its trademark

    Also don’t overlook that Facebook isn’t just claiming rights to the book part of their domain but the word face as well (trademark pending).

    Brian’s example is a good one, also black book is another long used term for keeping contacts of people.

  11. says

    Per Mike,
    Facebook applied for a social networking TM for “Face” in December 1, 2005 – still considered an applicant almost 5 years later – what does that mean ?

    As of now, Facebook did not apply for a similar TM for “Book” .

    Maybe someone that understands Trademarks can shed a little light why they would go after face but not book – and why the delay

  12. John Berryhill says

    “Facebook applied for a social networking TM for “Face” in December 1, 2005 – still considered an applicant almost 5 years later – what does that mean ?”

    Maybe it means they looked at the WHOIS for face.com and decided to go after someone else.

  13. Meyer says

    Quote –
    “It looks like a registered in bad faith as the ‘book’ ending doesn’t really describe the service but does look like it’s imitating facebook to a degree”

    Another quote -
    “Teachbook, based in Illinois, hasn’t even launched yet, but according to its homepage says it is a “teacher’s community” where users can share lesson plans and seek advice from fellow educators.”

    The jargon in the educational field for the location of lesson plans
    is ‘lesson book’.

    I believe the owner of TeachBook .com is playing off of the the
    industry term – Lesson Book.

    Ironically, the 2 separate owners of TeachBook and LessonBook are
    in the Chicago area.

  14. Verno says

    Sounds pretty generic to me:

    From Wikipedia

    A face book is a printed or online collection of photographs of people.

    The website’s name stems from the colloquial name of books given to students at the start of the academic year by university administrations in the US with the intention of helping students to get to know each other better.

    According to The Harvard Crimson, Facemash “used photos compiled from the online facebooks of nine Houses, placing two next to each other at a time and asking users to choose the ‘hotter’ person”.

  15. says

    I did not read the entire 345 page office action response on its trademark application, but it looks like FaceBook made the argument that FaceBook is so well known that users would not be confused between its proposed FACE mark and a pre-existing registration for FACE PARTY. But FACEBOOK is not so famous and well known that it WOULD be confused with TEACHBOOK, which allows teachers to share lesson plans? Way to go FaceBook.

  16. says

    When I went to college (in a time that predated PC sensitivity to fellow humans) the college face book was unofficially known as the “pig book”.

    So if I register pigbook.tld is Facebook coming after me? Give me a break. How about facemask.tld, bythebook.tld, etc.? Give me another break

    How is Teachbook illicitly siphoning the goodwill associated with Facebook? How is its existence creating consumer confusion as to the source of goods or services? While the Teachbook site is not yet live it does not appear to have a look and feel that’s in any way similar to that of Facebook, it bills itself as “A Professional Community for Teachers”, and it may also choose to conspicuous disclaimers that it has no affiliation with or endorsement by Facebook.

    Trademark is meant to provide certain benefits to the rights holder and the general public, but it is not meant to be a tool for stifling market entry and competition. Between this bullying lawsuit and its controversial privacy and other policies, Facebook seems to be forgetting that fame and fortune on the Internet depend on the whim of the virtual crowd — and that this year’s hot site can be next year’s has been if that crowd is turned off.

  17. Amr says

    So now they can sue YearBook.com & Myyearbook.com ?!!

    Facebook = shit

    their new up coming movie is joke!

    They disable and block accounts, there are many angry FB users out there.

  18. says

    10+ years ago there was this new Internet freeway being built called “Social Networking”. And this freeway keeps getting wided and wide and is always under contruction.

    One part of the freeway was going to go thru a new neighborhood called “Book”ville – the same as “GuestBook”ville.

    So I bought up SpaceBook.com in 1999 and FaithBook.com in 2001 knowing I would eventually be building Social Networking sites on that land.

    Then on the other side of the Social Networking Freeway this guy came by in 2003 or so and an enormous mega-complex called FaceBook.com. He advertises a lot and a lot of people go there. But as the cars pull into the FaceBook complex some might say they see my SpaceBook.com and FaithBook.com businesses that compete with FaceBook.com.

    Arn’t McDonalds and Burger Kings allowed on oppsite sides of the street ?

    Seems like I bought my “Book” land first. What do you think I should do ?

  19. Slate says

    First off I think most people should familiarize themselves with the rules of the game here. I have come across soo many people who just spout off what they heard someone else say (in stead of doing some homework).
    If you go to any domain forum and bring up that resembles a trademarked name, you will get a slew of “TM issues, Delete, Grace Delete… and so on”.
    Everyone says it. Its gotten to the point that I dont believe these people have read the ICANN Uniform Domain Name Dispute Resolution Policy.
    Its easy to find, its on the web and it states what the criteria is in matters of TMs.
    Section 4(a) and section 4(b) is what most people need to focus on.
    That clearly states the “Applicable Disputes” and “Evidence of Registration and Use in Bad Faith”
    Without getting too long winded here, it all comes down to infringement of a trademark. If you have a domain with the name FACE in the beginning, you should be safe if the site is about cosmetics. That is nowhere near infringing on FACEBOOKs claim to social media.
    The same can be said about a domain name that ends in the term “BOOK”. Your safe if its a used book store, or a eBook store.
    Its all about infringement. Nearly every word is trademarked in some fashion.
    Even generic words like the term “NAME” has 4649 TMs associated with it.

    You can find all this out with a little bit of homework.
    Gspto (dot) gov to search for Trademarks and Service marks
    ICANN (dot) org to search for the rules of domain names.

    Do the homework and I am sure you will be surprised how far a little understanding will go.

    Just my thoughts but what do I know.
    Cheers

  20. John Berryhill says

    The point is not about a claim to all uses of the word “book”, nor the fact that “teachers” have something to do with “books”. The website is not a teacher nor a book. It is an online community site for teachers, and they clearly used book to suggest a similarity with Facebook.

    And, yes, some of us went to schools where the freshman class was distributed a booklet of ID pictures and names of those in the class, and which was variously called a “face book” or “pig book”, but that is also fairly irrelevant. A generic “facebook” is a booklet with glossy pages, lots of pimples, and a couple of staples in it. It is not an online community website with interactive communication and information sharing features, etc., any more than “Google.com” is a one with a hundred zeroes after it.

    Trademarks are not about mechanical string permutation rules. The point is consumer perception:

    Would a relevant consumer think that a social community for teachers called “Teachbook” has some kind of association with “Facebook”?

    That is a fact question, and it is not going to be answered by a crew of armchair judges proclaiming their personal opinions. One way of getting at an answer would be to conduct a survey of internet-using teachers and see what the survey results indicate. You might get a fair number of them that believe “Teachbook” is a specialized service offered by Facebook, and you might not.

    When you launch a product or service, you have a blank page in front of you as far as what you decide to to call that product or service. In the thought process behind this site, do you really think nobody said, “Hey, doesn’t that sound something like Facebook?” or nobody figured that the existing reputation of Facebook would assist in communicating the nature of the service, so they wouldn’t have to say, “Our new ‘Eduwebthing’ is an online community for teachers….”

    Being able to communicate what the service is by calling it “Teachbook”, and avoiding a name that would require an explanation other than “sort of like Facebook, but for a specialized community” can easily be argued to be “getting a free ride” on the established reputation of an existing brand. That is NOT to say that it “tis” or “‘taint”, because whether it is or isn’t boils down to a fact question, not a legal question.

    As for the “does the law need to be changed?” aspect. Look, anybody can file anything with a federal court, pay their $350, and call it a civil complaint. If that point is not clear then, please, take a look at this lawsuit:

    Santos v. United Nations et al.

    http://www.archive.org/download/gov.uscourts.caed.202839/gov.uscourts.caed.202839.1.0.pdf

    (She thinks the United Nations is using a secret agent who looks a lot like Angelina Jolie to murder children. I think. It’s hard to tell.)

    That kind of thing gets filed in courts EVERY DAY. If you like twisted entertainment, and have a PACER account, good defendant names to search on are things like “Obama, Barack”, because every inmate suit names him as a defendant. You can learn about things like the deprivation of Constitutional rights because the Missouri Bureau of Prisons charges $1.00 per minute for international long distance telephone calls, people with radio receivers implanted in their heads by the CIA, and things like the case above which are, just weird.

    But, really, read that civil complaint and remember it the next time the “OMG Crazy Lawsuit Filed!” story comes around.

  21. says

    Drilling into the Money.com article:
    http://money.cnn.com/2010/08/26/technology/teachbook/index.htm
    Guys like PlaceBook.com and PartyBook.com shut down or changed the name of their business – albeit it looks like they have kept ownership of the domains.

    Per John Berryhill’s comment:
    “Trademarks are not about mechanical string permutation rules. The point is consumer perception:”

    Would a business that competes with Comcast called “Spacecast”, “Placecast”, “Partycast”, Faithcast” or even “Companycast” or “Commuicationcast” be perceived by the consumer to be a part of Comcast ?

    Doubtful – so what is the difference between a cast (or broadcast) and a book (or guestbook) ?

  22. John Berryhill says

    “Would a business that competes with Comcast called “Spacecast”, “Placecast”, “Partycast”, Faithcast” or even “Companycast” or “Commuicationcast” be perceived by the consumer to be a part of Comcast ?

    Doubtful – so what is the difference between a cast (or broadcast) and a book (or guestbook) ?”

    Brian, that’s exactly what I’m driving at. The point here is consumer perception. The expectation that fact-intensive questions follow mechanical rules is folly. Consumer perception is not rational.

    I guess Mike could better explain the distinction that lawyers make when using the phrase “question of law” versus “question of fact”.

    But, to respond to your question, there is no question that Comcast is in the broadcasting business, and that its name is suggestive of “communication” and “broadcast” as root terms. Neither Facebook nor Teachbook are selling, printing, distributing, or doing anything else with books. They are running online community sites. Whether that generates confusion in the relevant market is irreducibly a triable issue of fact.

    I’ll continue to wait for the inevitable collision between Verisign and Verizon, which will be Verifun, but I will make a bold prediction about this Teachbook/Facebook suit: It is unlikely to ever go to a decision.

    Also, given that these two have been duking it out in the USPTO in the opposition proceeding against Teachbook’s registration application (which has been going on for months already), there are already filings that give a good flavor of where this is heading.

  23. says

    Do you ask for a tissue or Kleenex – hasn’t Kleenex become a term (not a brand) representing the entire tissue business ?
    Isn’t that what facebook has become to social networking ? – “Book” (not the “FACEBOOK” brand) has become a generic term associated with social networking

    Until Microsoft came on the scene – was “soft” used in any other TM that sold computer software ?
    Is this a dotted line to Facebook’s overbroad “book” claim.

    Archive.org shows AdoptionBook.com had been used since 1999 as an adoption resouce and social networking forum -demonstrating “book” has been used in a social networking forum long before facebook – this not being as generic a BlackBook.com.
    And considering I already own SpaceBook.com (1999) and FaithBook.com (2001) a few days ago opted to buy AdoptionBook.com from the NetSol prereleases at NameJet.

    Anyone going to a ???Book.com site knows it is not associated with the “FACEBOOK” brand – especially with all the recent press.

    All I can say is thanks facebook for reinforing the “book” and social networking

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