Facebook Asserts “Book” as a Trademark

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Facebook Asserts “Book” as a Trademark

by Jess Robinson on April 1, 2012

As reported by Wired and other news outlets, Facebook is planning to assert trademark protection over certain uses of the word “book.” In clause 5.6 of the United States version of Facebook’s terms of service user agreement, Facebook currently asserts trademark protection over terms like “Facebook,” “face,” “poke,” and “wall.” In it’s proposed changes to the terms of service (click on the “English tracked changes PDF”), “book” is added to these terms. The above-linked Wired article discusses instances where Facebook brought trademark claims against other websites like “Teachbook” and “Placebook,” and the article goes on to say that including “book” as a trademark in Facebook’s terms of service will strengthen such trademark claims.

It makes a lot of sense to me that violating Facebook’s terms of service can get you kicked off the website, but how are the privately created terms of service able to impose a civil liability on someone if they use “book” in a way that Facebook deems impermissible? I think the short answer is that you can indeed be liable to Facebook for trademark infringement if you create a social networking website named “______book,” but the liability arises from the strength of Facebook’s brand and not from violating their terms of service.

An important thing to remember is that trademark protection, if it exists for a mark, only extends to the contexts in which consumers would expect to find that mark. For example, there is no trademark infringement when there is both “Prince” brand pasta and separately “Prince” brand tennis equipment, because these two brands being in different markets does not bring consumers to confuse them for one another. So the question here becomes how broadly or narrowly should we define “social networking websites,” the context in which one would expect to find the Facebook brand? This can get a little tricky considering that many websites not principally about social networking do incorporate some of its features.

Even though Facebook doesn’t have “book” filed as a trademark with the Patent and Trademark Office, actual registration helps but isn’t required to assert trademark protection over a mark. Instead, one needs to have a brand strong enough to be well known. Facebook has this in spades. I poked around a little bit on the Internet, and commentators say that between 7 and 10% of the entire world’s population has Facebook accounts. When people think of social networking, unless they’re Google+ hopefuls, Facebook is the first thing that comes to mind.

I think a court could easily find trademark infringement for a site named “______book,” because the factors listed in tests like Sleekcraft (e.g., strength of mark, similarity of marks, and degree of caution exercised by customers) are all in favor of Facebook and show there to be a legal likelihood of confusion. If someone surfing the web finds a site named “_____book,” it’s not a leap to think it’s an offshoot of Facebook, and that the “book” part of the name is a suffix that’s used to identify the brand. In this way, the website would benefit from the goodwill of Facebook’s brand. Also, there’s a chance that the site is named as such because it’s a fitting name, but there’s a much bigger chance that it’s named that way to benefit from Facebook’s brand. That benefit amounts to trademark infringement.

Facebook including “book” in its claimed trademarks isn’t an event in itself. There’s an argument that including it in its terms of service, and all Facebook users agreeing to the inclusion, increases an awareness of the Facebook brand’s broad scope, but that assumes that people read those terms of service. Instead, I think Facebook’s inclusion of “book” in its claimed trademarks goes to show the already existing strength of the company’s brand and how far it can extend in the limited context and market it occupies.

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