Yesterday James Johnson here at The Inquisitr shared the news that Facebook was launching a lawsuit against a site called Shagbook claiming that the site has infringed on their Facebook trademark. As James noted in his post Shagbook fired back that ‘Facebook’ was a generic term and therefore Facebook’s claim had no standing.
Well another interesting argument being floated by the smart folks at Techdirt, based on the Shagbook court filing, is that Facebook’s actions could threaten their trademark on “Facebook”. According to the filing by Shagbook in response to the Facebook action there are four main points they are trying to make:
- Facebook should never have been allowed to trademark “Facebook.”
The term was in common use in the English language well before Opposer began using the term in connection with its services. The term is used generically by many members of the public and by a wide variety of organizations. Because the term “facebook” was used by many parties descriptively and generically well before Opposer’s date of first use of the term, the term is generic and incapable of trademark protection under the laws of the United States.
- Facebook is engaging in trademark misuse and trademark bullying for anticompetitive reasons:
Opposer’s opposition should be denied under the equitable doctrine of unclean hands. Opposer has engaged in trademark misuse and trademark bullying by abusively using oppositions, litigation, and threats of the same to maintain a competitive market advantage. For these reasons as well as those outlined in Applicant’s counterclaims below, the opposition should be denied.
- There’s no likelihood of confusion, especially since Shagbook is a dating site, and Facebook has explicitly said it is not:
There is no likelihood of confusion between Applicant’s proposed mark and the mark cited by Opposer even reading the description of Applicant’s services broadly. Alternatively, Applicant is only using the mark in connection with its online dating related services, and as such, there is no likelihood of confusion with respect to the actual services provided by Applicant as Opposer does not provide online dating services.
- Not only is ‘Facebook’ generic, the company itself has used it in a generic manner:
In addition to numerous uses by third parties, Opposer has actually used the term “facebook” in a generic sense, and is estopped from now claiming that it is not generic.
This all boils down to Shagbook suggesting that Facebook shouldn’t even have a trademark on the name in the first place, and if the case goes in Shagbook’s favor one has to wonder what kind of position this actually puts Facebook in.