Well, as it turns out, what you think doesn't much matter. It's what their lawyers and your lawyers think that is going to decide this issue. But it's also part of the reason why companies end up with names like Google or Twitter or Squidoo. JL
Ruth Simon reports in the Wall Street Journal:
Trademark law was intended to help firms protect their marks in a narrow geographic area. But with the Internet’s rise there are more potential collisions and it’s harder to find things that are globally distinctive.
Well-known companies including Facebook Inc. are increasingly bringing trademark-infringement claims in their efforts to block startups and others from using similar names, some trademark lawyers and law professors say.
Engineers Kyle Clark, 35 years old, and Aaron Pollak, 30, decided over a beer at a Burlington, Vt., restaurant last year to name their new venture Designbook, after the brown notebooks engineering students use to document projects.
“The notion of a design book is something we are trying to embody in the digital space,” said Mr. Pollak, whose six-person startup helps enable entrepreneurs to find collaborators for nascent ventures. Designbook also plans to help startups raise money online from wealthy individual investors through a process known as“equity crowdfunding.”
But Designbook ran into an unexpected snag last month when social-networking giant Facebook Inc. filed an objection to its name with the U.S. Patent and Trademark Office. Facebook said that Designbook would infringe on the company’s trademark, confuse consumers and dilute its brand.
A spokeswoman for Facebook added that, as the owner of multiple famous trademarks, Facebook takes seriously its responsibility to reasonably protect its trademarks and prevent consumer confusion.
She noted that Designbook’s publicly available trademark application sought protection for a social-network service, coupled with the word “book” in its name. That would create a combination that Facebook believes could easily confuse consumers, she said.
According to a search of U.S. Patent and Trademark Office records, Facebook has been involved in more than 100 opposition proceedings. The Facebook spokeswoman said these figures include both active and inactive matters and various types of trademark proceedings, including ones where the company opposed a trademark, asked for an extension to negotiate a dispute with another party, or appealed a decision involving its own trademark registration efforts.
She added that Facebook has filed fewer than 100 notices of opposition in trademark matters in the U.S. in the last five years.
Another dispute over the use of the word “book” as a suffix involved Teachbook, an education technology startup. It changed its name to TeachQuest in 2012, after a federal judge in Illinois denied its motion to dismiss a trademark suit brought by Facebook. “We took one big swing against them,” said Mike Rodenbaugh, a San Francisco-based attorney who represented Teachbook, adding that his client couldn’t afford a longer legal battle.
Trademark law was intended to help firms protect their marks in a narrow geographic area, said Wendy Seltzer, founder of ChillingEffects.org, a website that tracks legal disputes involving online expression. But with the Internet’s rise, she added, “there are more potential collisions and it’s harder to find things that are globally distinctive.”
With a very strong trademark like Facebook, “the company has to be very careful about allowing other people to use marks that could be associated with it,” said Siegrun Kane, author of “Kane on Trademark Law: A Practitioner’s Guide.”
Some attorneys worry that these types of objections can make it harder for young companies to succeed. “It forces newcomers to come up with arbitrary or suggestive or fanciful names, which are harder to market because people don’t know what your good or service is,” said Betsy Rosenblatt, director of the Center for Intellectual Property Law at Whittier Law School in Costa Mesa, Calif.
To be sure, Facebook has sometimes found itself on the other side of trademark disputes. In 2011, Timelines Inc., a Chicago-based company that lets users build their own historical records, filed a lawsuit in U.S. District Court in Chicago to block Facebook from using the name “Timeline” for a new profile. Both parties agreed to dismiss the case in 2013, according to court filings.
“The parties have reached an amicable, confidential resolution of this matter,” said James Hultquist, an attorney representing Timelines.
In addition, some companies have been able to use “book” without incident. Handybook, a site for booking on-demand home services, launched in 2012, but it rebranded as Handy last year because it wanted a name that was a better fit, said co-founder Oisin Hanrahan.
“It has nothing to do with Facebook at all,” said Mr. Hanrahan. “People didn’t understand why we were referencing a physical book in our name. It was not clear it was referring to booking.”
Draeke Weseman, a Minneapolis trademark attorney who represents startups, said, “I tell clients that I hope they are not emotionally attached to one name over another.” In response to a growing number of objections like the one brought by Facebook, he has beefed up his standard trademark clearance process: He said he recently began conducting an additional search on variations of startup names to determine “whether the mark or similar marks are opposed by a large corporation.”
Mr. Pollak, of Designbook, said the naming dispute has been a distraction, adding that Designbook is likely to spend tens of thousands of dollars on legal fees, money it would prefer to spend on Web applications or community development.
“It never popped into our heads that there would be an issue with a suffix,” he said.
Designbook as a company “is very much a platform for entrepreneurs and emerging businesses,” not a social-media platform, he added. The biggest issue for Designbook, he said, is Facebook’s effort to block trademark language in another category, telecommunications. That could block Designbook from letting entrepreneurs use its platform to share pitches and other materials aimed at prospective investors using equity crowdfunding.
The idea for the business came from the difficulties Mr. Pollak and his co-founder had in finding collaborators and funders for their own ventures. The platform now hosts about 400 startups; it has also hosted five business-model competitions and has eight more in the pipeline.
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