While its been said that imitation is the sincerest form of flattery, this is seldom the way its taken when it comes to trademarks. Facebook, a popular provider of online networking services, filed a federal lawsuit against Teachbook, an online community for teachers based in Northbrook, Illinois. Facebook claims that the use of the Teachbook mark for an online community for teachers, infringes its distinctive and famous trademark. Specifically, Facebook claims that the BOOK portion of its trademark is distinctive. This may seem odd given that “book” is a common English word. However, Facebook argues that its use of the BOOK for online networking services is distinctive.
In its Complaint Facebook seeks damages and injunctive relief under federal, state and common laws for trademark infringement, trademark dilution, false designation of origin, unfair competition, and cybersquatting. Specifically, Facebook has asked that Teachbook.com LLC be enjoined from using the TEACHBOOK mark or any similar trademark, trade name, service mark or domain name containing the word BOOK. Facebook has also asked that the court declare the TEACHBOOK trademark application void ab initio, award Facebook money damages and treble damages, as well as, all costs, attorneys fees and expenses associated with bringing this suit. Lastly, Facebook also seeks transfer the of the domain teachbook.com.
Facebook bases its claims on its assertion that the BOOK portion of its trademark is distinctive. Although “book” is an English word, it can still function as a distinctive mark when used for goods or services that it does not actually describe (recall APPLE for computing.) Nonetheless, Facebook’s suit is not an open and shut case. In order to prevail, Facebook must still show that there is a likelihood of confusion between the two trademarks. Because the FACEBOOK and TEACHBOOK marks contain other terms that are not identical, a court could conclude that there is no likelihood of confusion. However, if a court believes that consumers are likely to expect any online community containing the word BOOK to have been created by or affiliated with Facebook, then the popular online networking service may prevail.
A Facebook victory may forestall future attempts to use the word “book” as a part of a mark for other websites and services. But would help keep Facebook’s mark clear in the vast world of the web. For Facebook the potential benefits of success outweigh the downside of failure. It’s east to see Facebook’s attraction to enjoy a web free of other “book” community websites. But if it loses perhaps Facebook can take heart from YouTube- who most of us are unlikely to confuse with TeacherTube.
The Facebook case reminds us that a trademark lawsuit can be a costly and protracted way to protect your rights and the distinctiveness of your mark (Teachbook has vowed to fight.) But a successful suit protects your rights and sends the message to third parties that you will defend your trademark to the fullest extent the law allows.