I filed a number of trademark applications around Think's FACECASH registered trademark just in case Think ended up expanding into other fields. One of them was FACEMAIL. Facebook filed an opposition despite our "settlement" agreement.
Facebook argued that it was confusing. I argued that the market is full of confusion: for example, Apple owns FACETIME, a software product that overlaps completely with Facebook's market. At the hearing, I also pointed out two more "confusing" eight-letter same-four-letter-prefix marks that everyone knows: STAR TREK and STAR WARS. Facebook paid a consultant $120,000 to create a survey that ignored the state of the market and asked people what company they thought made a product called FACEMAIL. Only 36.2% chose Facebook, Inc.
Throughout the multi-year process, Facebook's lawyers refused to respond to typical phone calls and e-mails. I filed a motion for sanctions, which was granted in part here. They also redacted just about everything that suggested I existed, so I filed a motion to counter that, which was also granted in part.
In the end, the Board concluded that the two marks were likely to confuse consumers--completely ignoring the state of the market, and the fact that the increase in digital video technology especially leads to more uses of faces in computing--and argued that because FACEBOOK is famous, and because FACE is an important part of FACEBOOK, Facebook can stop the registration of any FACE- mark that could be argued to be related to anything Facebook does.
I also pointed out that Facebook always uses the same shade of blue and the same font to emphasize its design mark, and that FACEMAIL would not be used in the same manner, so it would not be confusing. One of the judges on the panel countered that I "might" do that in the future, though. So suddenly we were discussing (in a civil context) pre-crime: whether I should be restrained broadly from doing something narrow I specifically planned not to do.
Facebook's internal counsel admitted at the hearing that their standard naming scheme is "FACEBOOK X" where X is some feature, but then made it try to sound like Facebook, Inc. has some features with the FACE- prefix, which it does not. In fact, she was referring to one app on the effectively-defunct Facebook Platform, which is not made by Facebook, Inc.
Thankfully the Board completely ignored Facebook's even-more-draconian argument that FACEMAIL would cause "trademark dilution," a new phenomenon invented by Congress at the behest of enormous corporations. The law is so insane (especially since it was amended) that the Board tries to ignore it out of existence, rarely ruling upon dilution issues.
I pointed out (in writing, in the record, with a printout from harvard.edu and by waving the paper version I had from 2003 at them) that Harvard and other universities have used FACEBOOK for decades, making it a generic term that offers zero protection in the view of the appellate courts. To that, the Board said, "applicant’s argument that 'The Facebook' is the name of an electronic directory of Harvard University students is not supported by any testimony or evidence."
Except when you actually need one... Which it sounds like you did. The facebook lawyers probably didn't bother responding because they knew you had almost no teeth.
No one, on this forum or otherwise, is in any position to evaluate whether or not someone else truly might need a lawyer. Every case tends to be full of nuance.
In my case, you have a history with the plaintiff/opposer, some part of which is confidential, someone who just spent a year as a fellow at Stanford Law School, and who has worked with probably thirty lawyers on various cases, including several trademark cases in the past.
I got a motion for sanctions against Facebook's lawyers granted in part, as well as a motion reversing their redaction choices. Granted, I didn't win, but I might not have expected to going in, and it shows at the very least that I'm not your average pro se plaintiff.
I think people either really overestimate the abilities of lawyers, or underestimate a persons ability to learn and understand the law and legal process themselves.
Yes, good lawyers are valuable and cannot be underestimated. But let's not be fooled to think that some C student lawyer who limped though the Bar is any more capable than someone with passion and intellect devoted to a specific case or issue.
"Lawyers are an enormous waste of money and in most circumstances a drain on society."
But you also say:
"No one, on this forum or otherwise, is in any position to evaluate whether or not someone else truly might need a lawyer. Every case tends to be full of nuance."
Why the absolute statement as well as the contradiction if in fact you believe that "No one, on this forum or otherwise, is in any position to evaluate whether or not someone else truly might need a lawyer."
I would expect a product named Facemail to be something created by Facebook either less than or as much as I would expect a product named Facetime to be something created by Facebook.
When we start making these decisions more heavily on the subjectivity of users more than objectivity (e.g. the colors would be completely different, and if they aren't then a trademark infringement could be filed at that time), then we're just giving the free market to large corporations.
The more popular a brand is, the more likely more people are to associate related names/colors/symbols to that brand. Trademark law simply does not exist for cases like this. It exists to prevent genuine outright infringement.
I don't disagree that a well known mark should get more protection because it is well known--otherwise people could just trademark every word in the dictionary and enforce it with equal weight as Google.
But OP wasn't using Facebook, he wasn't using Facebok, he wasn't using Facbook, he wasn't pretending to be Facebook, we wasn't competing with facebook, he wasn't using the colors, the image, or anything related to the brand.
No, he was punished (i.e. the government used force against him to hider his free market ability) for using a name that started with Face. That's simply not a threshold that we, as a society, should accept as protected--no matter the popularity of the brand, no matter the laws a group of 435 people influenced heavily by corporations have managed to actually pass.
Besides that, the ruling is by it's very nature a subjective decision. I disagree with their subjective decision.
So did a third of other random people surveyed. You would not be in the majority apparently, and after seeing a logo or web page you would hopefully be able to figure out it is not created by Facebook.
I think the question is whether you find yourself confused by the fact that Apple makes FaceTime while Facebook makes Facebook (and Think makes FaceCash).
At some point, and this is why the Star Trek / Star Wars example matters, consumers realize that the prefix is generic within the scope of a given market. Telecommunications and faces overlap a lot these days.
Personally I would think that FaceTime and FaceCash were made by Facebook Inc. (As I had actually never heard of either of those).
I also thought that Star Trek and Star Wars were related or the same thing for most of my childhood. I didn't want Star Wars because I'd seen Star Trek on TV and not liked it (I was young).
It's just something people do (or at least I do). I think it's maddness to prevent the use of names starting with "Face" because of this confusion. I thought that iPlayer was apple related like iTunes for a long time. It's confusing yes but I don't feel you should be able to prevent someone using a similar sounding name.
I filed a number of trademark applications around Think's FACECASH registered trademark just in case Think ended up expanding into other fields. One of them was FACEMAIL. Facebook filed an opposition despite our "settlement" agreement.
Facebook argued that it was confusing. I argued that the market is full of confusion: for example, Apple owns FACETIME, a software product that overlaps completely with Facebook's market. At the hearing, I also pointed out two more "confusing" eight-letter same-four-letter-prefix marks that everyone knows: STAR TREK and STAR WARS. Facebook paid a consultant $120,000 to create a survey that ignored the state of the market and asked people what company they thought made a product called FACEMAIL. Only 36.2% chose Facebook, Inc.
Throughout the multi-year process, Facebook's lawyers refused to respond to typical phone calls and e-mails. I filed a motion for sanctions, which was granted in part here. They also redacted just about everything that suggested I existed, so I filed a motion to counter that, which was also granted in part.
In the end, the Board concluded that the two marks were likely to confuse consumers--completely ignoring the state of the market, and the fact that the increase in digital video technology especially leads to more uses of faces in computing--and argued that because FACEBOOK is famous, and because FACE is an important part of FACEBOOK, Facebook can stop the registration of any FACE- mark that could be argued to be related to anything Facebook does.
I also pointed out that Facebook always uses the same shade of blue and the same font to emphasize its design mark, and that FACEMAIL would not be used in the same manner, so it would not be confusing. One of the judges on the panel countered that I "might" do that in the future, though. So suddenly we were discussing (in a civil context) pre-crime: whether I should be restrained broadly from doing something narrow I specifically planned not to do.
Facebook's internal counsel admitted at the hearing that their standard naming scheme is "FACEBOOK X" where X is some feature, but then made it try to sound like Facebook, Inc. has some features with the FACE- prefix, which it does not. In fact, she was referring to one app on the effectively-defunct Facebook Platform, which is not made by Facebook, Inc.
Thankfully the Board completely ignored Facebook's even-more-draconian argument that FACEMAIL would cause "trademark dilution," a new phenomenon invented by Congress at the behest of enormous corporations. The law is so insane (especially since it was amended) that the Board tries to ignore it out of existence, rarely ruling upon dilution issues.
I pointed out (in writing, in the record, with a printout from harvard.edu and by waving the paper version I had from 2003 at them) that Harvard and other universities have used FACEBOOK for decades, making it a generic term that offers zero protection in the view of the appellate courts. To that, the Board said, "applicant’s argument that 'The Facebook' is the name of an electronic directory of Harvard University students is not supported by any testimony or evidence."
Right.