If the day comes that Facebook applies to register “book” as a trademark, is the USPTO likely to reject its application? Perhaps Facebook is better off leaving that question open rather than documenting any USPTO denial.
Does Facebook actually even use “book” as a mark as its new user agreement implies? If it does, is “book” sufficiently arbitrary, and not just descriptive, such that it can be recognized as a protectable mark? What is truly a “book” anyway in the technology of today’s publishing? We could quickly get philosophical.
Facebook has occupied the news for some weeks, mostly over the frenzy that led up to its IPO and the questions and evaluations that have followed it. Everyone seems to have an interest in the well-being of the company and its investors, not the least those who live in Northern California and hope some positive change in the economy will correspond to the interests in the IPO. Another piece of Facebook “news” was lost in the fray over stock price. Again, Facebook has updated its user agreement. Again, users have signed a wide-reaching agreement with Facebook. So what’s happening this time? Did you sign away the rights to your soul? Not just yet.
At this stage, Facebook appears to be trying to expand its trademark rights to encompass the word “book.” Facebook has a line in its new terms of service where users agree not to use any terms similar to Facebook’s signature words (including, specifically, “book”) in a manner that might cause brand confusion. The newly revised user agreement reads, in part, as follows:
“You will not use our copyrights or trademarks (including Facebook, the Facebook and F Logos, FB, Face, Poke, Bookand Wall), or any confusingly similar marks, except as expressly permitted by our Brand Usage Guidelines or with our prior written permission.”
What is the basis for this provision? What are its implications? Facebook has a registered trademark in the word “face,” however, it does not have a registered trademark in the word “book” (though the company has a trademark application pending for “book” in the EU). A search of the trademark database maintained by the US Patent and Trademark Office shows Facebook with 73 active trademarks, many of them covering different uses of the words “Facebook.” Other registered trademarks cover the letter “F,” “Face,” “FB,” the number “0″ with a period, “F8,” “Facebook Developer Garage,” “Wall,” “Facepile,” “Nextstop.com,” “Facebook for good,” “Friendfeed,” Facebook Insights,” “Facebook Pages,” and “Facebook Ads.” It is unclear whether Facebook plans to submit an application to register the word “book” as a mark in the U.S. as of yet, but getting the rights in a word as common as “book” could be extremely difficult. Rather, Facebook may be trying to establish an unregistered (or “common law”) trademark in the word “book” as it uses it over time.
Asserting rights in the word “book” is nothing new for Facebook. New companies recently using marks like, “Teachbook,” “Lamebook,” “FacebookofSex, “Placebook” and “myEworkBook” have met opposition from Facebook based on trademark claims. Facebook argues that these companies selected their names in order to free-ride on Facebook’s popularity. The strength of Facebook’s trademark argument in these instances is still not entirely clear, since most of the companies settled and others are still pending.
Whether or not Facebook can achieve registration at this stage, Facebook may be attempting to secure “secondary meaning” in “book.” That is, when a word is ordinarily too descriptive to be accepted as an “arbitrary” or “suggestive” trademark, an applicant can overcome that barrier by showing that the public recognizes the term as a mark associated with the company, that is, that the public accords it “secondary meaning.” Users signing the new Facebook agreement are learning and recognizing, as the contract communicates, that “book” is one of Facebook’s “signature words” with the “secondary meaning” that supports trademark rights.
What kind of contract rights can Facebook be expecting to create in this provision of its agreement with a population of 845 million or more users? Is this somehow a contract about “book” as a trademark or “signature word”? On its face, the provision’s language seems to track a trademark standard – by prohibiting use of the words in a way “that might cause public confusion.” Thus, Facebook may, in fact, be asserting no more than its trademark rights or expectations. Nonetheless, in doing so, it purports to contract public recognition of these terms as its exclusive mark(s), and public recognition is an important basis for solid trademark rights.
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Lizbeth Hasse
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