Challenge to Facebook’s Trademark

Most readers probably know about the bitter lawsuit against Mark Zuckerburg, the controversial founder of Facebook, alleging that he stole the idea for the wildly successful social-networking site from other Harvard students who had hired the young geek to write code for a similar site, eventually unveiled as ConnectU. I never knew whom to believe in that fight; the claim seemed potentially credible but there was a he said/they said element that made it hard to tell. Anyway, the New York Times reported last month that the antagonists were in confidential settlement talks, and I assume will reach a resolution.

Tuesday, another dispute about the site’s origins surfaced, this time over Facebook’s trademark. (The company actually has pursued many related marks.) Aaron Greenspan, a different Harvard classmate of Zuckerburg’s uninvolved in the ConnectU case, has filed a petition with the Patent and Trademark Office to cancel the FACEBOOK mark. (UPDATE: Copy posted here by Marty Schwimmer.) Greenspan claims that the term “FACEBOOK” is generic for the kind of photo directory that many schools have published annually for years, and so cannot serve as a trademark. (At my undergraduate alma mater, Carleton College, and now at the University of Minnesota Law School where I teach, it is known as a “Zoobook” — is that just a Minnesota thing?) A generic term for an item — the very name of the thing described –cannot be a trademark.

I have not seen the petition, but based on what I know this new claim seems like a total loser. FACEBOOK might be descriptive of a certain kind of photo directory, but at a minimum it seems the term also (by now) carries widespread secondary meaning as an identifier for Zuckerburg’s site. That’s good enough for trademark status. This looks like an attempted shakedown of a now-successful company. (Techdirt is similarly unimpressed.)

The most interesting aspect of this story is Greenspan’s explanation for why he is suing, at the end of an Associated Press article:

Greenspan acknowledged he might be willing to drop his petition for the right amount of money. But he said what he really wants is the legal right to use the term Facebook in the title of a 335-page “memoir” that he plans to self-publish later this month.

He intends to call the book, “Authoritas: One Student’s Harvard Admissions and the Founding of the Facebook Era.” But Web sites wouldn’t let Greenspan advertise the book under that title because of Facebook’s trademark, prompting him to fight for the rights to the name.

First of all, even a constrained definition of trademark fair use should likely allow the use of Facebook’s name in the title of a work talking about Facebook. So there is no legal trademark obstacle to his advertisement of the book. Unfortunately, many web sites (including Google) over-inclusively forbid advertisements using a trademark that the advertiser does not own, even when it is perfectly legitimate under trademark law. (Recall the controversy when Google removed a Republican campaign ad criticizing as a result of the policy.) That is what seems to be causing Mr. Greenspan’s problem. The proportional response, of course, is for Facebook to declare that it does not challenge the use of their name in the book — but of course won’t pay him any money. Will he drop his claim then? Time may tell.

6 Responses to “Challenge to Facebook’s Trademark”

  1. I agree that FACEBOOK seems to be suggestive rather than descriptive of the website and there is no doubt that secondary meaning has accrued even if it were descriptive.

    That said, if it were determined to be generic for any site or book that has faces, then secondary meaning would be irrelevant. (Not out of the realm of possibility – my old firm couldn’t register because it was supposedly generic, though we argued it was suggestive). I see that as the only way cancellation might occur here.

  2. Mike: Sure, generic trumps all. But I can’t see FACEBOOK as generic. Maybe SOCIAL NETWORK would be generic.

  3. I agree that it’s likely not generic in web form (assuming there are social networking features). I was just saying that is the only argument that has any legs (and its legs are weak).

  4. Mr. Bambauer, I sincerely hope that you report on the Lexicon case now that there’s been a trial (but don’t rely on press reports to do so because they have been terrible). Maybe once all the transcripts are public? We as fans desperately need a rational legal mind to talk this out.

    There are summaries of the first two days in court on The Leaky Cauldron website but nothing yet on the third.

  5. If FACEBOOK is considered descriptive, I definitely think it has acquired secondary meaning.

  6. I don’t quite understand the trademark distinctions, but on the prior generic use front, I’d point you to this Crimson article, with a lot of quotes along the lines of:

    “There is a project internally with computer services to create a facebook,” Davis said. “We’ve been in touch with the Undergraduate Council, and this is a very high priority for the College. We have every intention of completing the facebook by the end of the spring semester.”

    Zuckerberg willingly acknowledges the genesis of the term. Of course, as you’ve said, at this point most every college student associates “Facebook” with the “.com”, and many colleges (including the one I attended) have changed the name of their freshman facebook to something else precisely because of this potential for confusion.