It’s a smart move. By adding a claim on a trademark right on the word ‘book’ to a newly revised version of ‘Statement of Rights and Responsibilities,’ the agreement binds all users to implicitly consent to the term by using or accessing Facebook.
That Facebook hasn’t actually registered a trademark on ‘book’ is immaterial, even if the trademark hasn’t been registered as just adding the claim to the Facebook’s user agreement is expected to boost the company’s standing in future lawsuits. Facebook, on its part, has launched multiple lawsuits against websites incorporating the word ‘book’ into their names.
Failure to register a trademark does not in any way incapacitate a party’s right vis-à-vis the trademark, which can be asserted on the basis of ‘use’, even if it hasn’t been registered. Unregistered marks are common all over the world, particularly in the US, and rights arise from use, not registration which is how Facebook will attempt to reclaim its ‘rights’ on the term ‘book’.
Reportedly, a search of the trademark database maintained by the US Patent and Trademark Office indicated Facebook with 73 active trademarks, many of them covering different uses of the words ‘Facebook’ and ‘like.’ Other registered trademarks cover the letter ‘F,’‘Face,’‘FB,’ the number ‘0’ with a period, ‘F8,’‘Facebook Developer Garage,’‘Wall,’‘Facepile,’ ‘Nextstop.com,’‘Facebook for good,’‘Friendfeed,’‘Facebook Insights,’‘Facebook Pages,’ and ‘Facebook Ads.’ Although the word ‘Book’ doesn’t appear on the US list, in November 2010, an American newspaper reported Facebook was successful in being able to get ‘Face,’ trademarked but might have a tougher time gaining rights to the word ‘book.’ Incidentally, myEworkBook had filed an application to get the ‘Book’ trademark in the US, but abandoned the application after an unfavorable decision by the trademark review board.
A pending trademark application on ‘book’ by Facebook listed in the European Union’s trademark database indicates that the current status is ‘application opposed’ with ‘likelihood of confusion’ listed as the reason for opposition. Concurrently, Facebook’s lawsuit against ‘Teachbook’ is still pending. Facebook settled a suit it filed against ‘Lamebook’, allowing the parody site to continue operating.
FacebookOfSex.com was also taken over by Facebook and a travelsidePlacebook too changed its name in 2010 opting out of a fight considering the extraneous cost of litigation. “Maybe I was being naïve, but I thought I could convince the lawyers at Facebook that our site was totally impossible to confuse with theirs,” the Placebook site owner wrote in a blog.
According to data from SERION, the world's largest searchable trademark database, there are five classes of trademark from which most filings were made last year and the five countries whose individuals, companies or other groups filed the most trademarks of any class. Class 35 that covered advertising, business management business administration and office functions came out on top, with over 3,00,000 trademarks filed in 2011.
Classes 41, 25 and 9 witnessed over 2, 00,000 trademarks filed. Class 41 covers areas including sporting activities and education; 25 deals with clothing, footwear and headgear and 9 which covers technical equipment such as computers.
China, and predictably too, topped the list of countries filing the most trademarks with 9,74,845 dropping from a previous one million, followed by USA who registered 3,05,400 followed by India, Brazil and South Korea.
The war on trademarks is novel and fraught with a lot of legalese that we need to be familiarised with failing which we run the risk of having to buckle under pressure. Usage is almost as good as registration and Facebook has extended this within its battery of ammunition bracing itself for a trademark war in the future.
Gajanan Khergamker heads Draftcraft and can be contacted at legal@draftcraft.in