Intellectual Property Law

Challenge to Facebook’s Trademark

By Tim Armstrong, Derek Bambauer, and William McGeveran.

Most readers probably know about the bitter lawsuit against Mark Zuckerburg, the controversial founder of Facebook, alleging that he stole the idea for the wildly successful social-networking site from other Harvard students who had hired the young geek to write code for a similar site, eventually unveiled as ConnectU. I never knew whom to believe in that fight; the claim seemed potentially credible but there was a he said/they said element that made it hard to tell. Anyway, the New York Times reported last month that the antagonists were in confidential settlement talks, and I assume will reach a resolution.

Tuesday, another dispute about the site’s origins surfaced, this time over Facebook’s trademark. (The company actually has pursued many related marks.) Aaron Greenspan, a different Harvard classmate of Zuckerburg’s uninvolved in the ConnectU case, has filed a petition with the Patent and Trademark Office to cancel the FACEBOOK mark. (UPDATE: Copy posted here by Marty Schwimmer.) Greenspan claims that the term “FACEBOOK” is generic for the kind of photo directory that many schools have published annually for years, and so cannot serve as a trademark. (At my undergraduate alma mater, Carleton College, and now at the University of Minnesota Law School where I teach, it is known as a “Zoobook” — is that just a Minnesota thing?) A generic term for an item — the very name of the thing described –cannot be a trademark.

I have not seen the petition, but based on what I know this new claim seems like a total loser. FACEBOOK might be descriptive of a certain kind of photo directory, but at a minimum it seems the term also (by now) carries widespread secondary meaning as an identifier for Zuckerburg’s site. That’s good enough for trademark status. This looks like an attempted shakedown of a now-successful company. (Techdirt is similarly unimpressed.)

The most interesting aspect of this story is Greenspan’s explanation for why he is suing, at the end of an Associated Press article:

Full post as published by Info/Law on April 17, 2008 (boomark / email).