This week, Facebook’s trademark action against a small online teaching company has been all over the news. In summary, Facebook contends that TeachBook infringes its trademark rights in the “Facebook” name because, presumably, the “book” part of the name is associated in the minds of the relevant consumer public with the now well-known Facebook brand. Today, it was reported that Facebook is now trying to own the rights to the “face” part of its name.
Most wouldn’t be surprised that the word “book” is used as a part of the name of a multitude of products and services, which would make it appear that Facebook is using its resources to beat up on smaller companies. The natural response from the layperson is “why is Facebook being such a trademark bully?” But to someone with experience in IP strategy, the business reasons behind Facebook’s actions are clear.
From a legal perspective, Facebook likely has little legal standing to extend its trademark rights in a direction that will allow it own either “face” or “book” as individual aspects of future trademarks in as-yet-introduced third party products or services. These words are just too non-specific and common to legally signify the source of a product or service. That is, if you as a member of the public saw the word “face” with another word–say “music”–would you think the company providing that product was the Facebook company? Probably not. So, should Facebook be allowed to own all rights to “face” or “book” when combined with another name, as it is now apparently contending? Certainly not, and, without more legally relevant evidence, the Trademark Office is likely to deny Facebook the ability to prevent others from using face or book in their products or services.
Given the lack of legal basis for its contentions, Facebook’s actions instead appear to be directed toward using its vast financial and legal resources to either get smaller companies to forfeit their probable superior trademark rights or to obtain settlements with cash-strapped start-ups–like TeachBook–that will allow Facebook to expand its products and services in the direction needed in the future. Is it legal for Facebook to do this? Yes, and it appears that they have been successful in doing so previously. Is it right? I don’t think so, but business is business. Nevertheless, I hope that Facebook is thwarted in its attempts to leverage the legal system and deep pockets to fix errors made by the founders in the early days who decided that “Facebook” was a cool name for, well–a facebook–as well as the later failures of its business advisors to craft a more scalable and protectable name. In other words, much like the bullying that occurs with children, Facebook’s current “trademark bullying” is a result of the “poor parenting skills” of those managing the company when it was a young start up. Continue reading