By Edward Lee [via Huffington Post, August 27, 2010]
“Social” media giant Facebook just became less social. It filed a lawsuit this week against a small startup site called Teachbook, based in Northbrook, Illinois. Teachbook bills itself as “a professional, online community for teachers” where they “can create, share, and search a database of lesson plans and instructional videos created by other teachers, as well as find online courses, instructional modules, and other education resources.” Teachbook hasn’t even officially launched yet. But that didn’t stop Facebook from filing its lawsuit against the new site. So why is Facebook in such a tizzy?
Well, Facebook claims that the term “Teachbook” infringes and dilutes Facebook’s trademark. Facebook doesn’t want others online to be able to use “book” in their names. You heard that right, Facebook claims ownership over the word “book” — at least as used in the context of trade names for businesses with online communities or networking websites.
If you’re confused by Facebook’s argument, it’s understandable — the argument is a bit confusing. One of the key requirements of a trademark infringement claim is proof of a likelihood of confusion between the two marks in the eyes of consumers. It’s hard to imagine people would ever confuse Teachbook for Facebook, the second most trafficked site in the U.S. The two sites look quite different, and the names themselves indicate affiliation with each other just as much as “Kmart” and “Walmart” do. Of course, no one confuses Kmart for Walmart, or assumes their affiliation, just because they both have “mart” in their names.
Facebook’s claim of trademark dilution is just as puzzling. In its complaint (click here), Facebook alleges: “If others could freely use ‘generic plus BOOK’ marks for online networking services targeted to that particular generic category of individuals, the suffix BOOK could become a generic term for ‘online community/networking services’ or ‘social networking services.’ That would dilute the distinctiveness of the FACEBOOK Marks, impairing their ability to function as unique and distinctive identifiers of Facebook’s goods and services.”
Again, Facebook’s argument seems to defy our common experience and practice. For example, video-sharing giant YouTube has a very famous trademark that is probably just as famous and distinctive as Facebook’s, if not more so. Yet YouTube’s mark doesn’t appear to have been diluted one bit (either blurred or tarnished) by the emergence of other video sites such as SchoolTube and GodTube, or even pornographic sites like RedTube and YouPorn. In other words, the existence of these other marks–“SchoolTube,” “GodTube,” “RedTube,” and “YouPorn”–doesn’t appear to have impaired the distinctiveness of the name “YouTube” at all. YouTube is the most trafficked video site in the world, with over 144.1 million viewers each month, and a business name “YouTube” that seems incredibly distinctive among consumers based on these numbers. The same holds true with the name “Facebook,” given that Facebook gets even more viewers than YouTube.
Besides the legal arguments, the other puzzling aspect of Facebook’s lawsuit is the company’s tin ear to public relations. And here’s probably the biggest head-scratcher. Going after a small website intended to help teachers with lesson plans is just not good PR, no matter how you slice it. The company’s aggressiveness in protecting its trademark against Teachbook might strike many people as trademark bullying. And if there’s one lesson that is true both in trademark and in life: no one likes a bully.
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