Spurred on by the explosion in social networking, there appears to be an interesting trend by certain trademark owners to stretch the boundaries of “likelihood of confusion” under U.S. trademark law. Facebook has taken issue with online teacher community Teachbook, which has escalated into litigation, and its well-publicized bout with Lamebook has resulted in Lamebook filing a pre-emptive declaratory action (prompting an interesting knee-jerk reaction from Facebook from which they later backtracked). Facebook’s aggressive trademark policing tactics even induced online location-based service Placebook to change its name (er…pronunciation…can you say “Placéboök”?) It’s easy to see the underlying theme here – Facebook seems to believe that its “-book” suffix is highly distinct in the online world. Apple Computer has taken a similar position to protect its iPod brand regarding use of the term “pod” [see more about the SectorLabs’ David vs. Goliath battle here (for the legally curious, a detailed history of the Trademark Trial and Appeal Board proceeding of Apple’s opposition to Sector Labs’ “VIDEO POD” mark can be found here). Now, the social media gaming company Zynga, creators of the wildly popular “Farmville” game on Facebook, wants in on the cease-an-desist action regarding…you guessed it…use of the “-ville” suffix (perhaps still smarting from Digital Chocolate’s own claims of trademark infringement against them for Zynga’s use of the game title “Mafia Wars”). As if taking a cue from the Lamebook/Facebook dispute, Blingville, LLC has filed a declaratory judgment action seeking a determination of its rights. This will be an interesting case to watch, given that USPTO records indicate that Zynga does not appear to have had use of the “Farmville” name in commerce until June 2009, while Blingville asserts use on or about the time its predecessor-in-interest registered the domain name “blingville.com” in October of 2004…time (and evidence) will tell.
How likely are such tactics to succeed? First and foremost, trademark owners have a duty to police their trademarks, so one can’t fault a trademark owner for taking exception to the use of any descriptors that it reasonably believes can cause confusion to the consuming public. Such “likelihood of confusion” is the litmus test for trademark infringement, and requires the weighing of a number of factors outlined in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973) to determine confusing similarity (referred to as the “DuPont factors”). With reference to “suffix policing”, reasonableness seems to be giving way to some aggressive posturing. Facebook obviously took exception to Teachbook because it is an online community for teachers…but when one sees the site, the likelihood of confusion is not self-evident. Applying the DuPont factors, it seems that Facebook is relying upon the similarity and “distinctiveness” it has acquired through the accumulation of over 500 million users to “compel” Teachbook to stop using the name “teachbook”. Although teachers have been using books a great deal longer than Facebook has in its name, this suggestiveness interplays off of the social networking giant’s name in a manner that seems to be causing Facebook a certain level of consternation. Using the name “Teachbook”, however, does not seem to deceive the public into believing that it is somehow affiliated with, endorsed or sponsored by Facebook. Lamebook is a closer call – it does have a business model premised upon bizarre (and often hilarious) postings on Facebook, using a “thumbs-down” design clearly playing off the Facebook “like” icon. Nevertheless, satire and parody (a legitimate defense in trademark law) appear the driving factor for the site (and very few users seems likely to confuse it with Facebook…although we’ll have to see how the chips fall in that case). Bottom line: Facebook doesn’t want anybody using “-book” in any way that demonstrates use in not just the social networking market space, but in any online community. Last I checked, that position may actually exclude the Internet….
Sarcasm aside, what Facebook, Apple and Zynga have in common is that their marks have arguably acquired a high level of distinctiveness due to the proliferation of their products and services online. Sharing a suffix alone, without more, will not be enough to support confusing similarity, and these companies will need to show more to prevail. Therefore, these companies appear to be leveraging this distinctiveness in forwarding the likelihood of confusion argument (i.e. that these other companies deceive the consuming public into believing there is some type of affiliation, connection, or association with them, etc.) and will likely present evidence in support of this distinctiveness to buttress their positions. Essentially, they are relying on distinctiveness bordering on famousness to stake their online space. To this observer, however, these companies need to be very methodical in their arguments and strategic in their evidence so as not to have such “spirited” policing border on bullying in the minds of the consuming public.
Thinking of creating a site to disseminate podcasts through social networking? Rethink the name “PodBook”….