Teachbook is an online substitute for Facebook. Teachbook is designed for teachers, because many schools prohibit teachers from having Facebook accounts. Teachbook filed an intent to use trademark application for the mark TEACHBOOK in the U.S. Patent and trademark Office
This past August Facebook sued Teachbook.com in the Federal District Court for the Northern District of California. Facebook alleged that Teachbook misappropriated the distinctive “BOOK” portion of Facebook’s trademark.
In its complaint, Facebook asserts that the “BOOK” component of its mark FACEBOOK is not descriptive and is arbitrary and highly distinctive in the context of online communities. Facebook fears that if others are allowed to use the suffix BOOK, then the word BOOK would become generic which would dilute the distinctiveness of Facebook’s mark. Facebook’s complaint alleges trademark infringement, federal trademark dilution, false designation of origin, common law trademark infringement, unfair competition, state trademark dilution and cybersquatting. Facebook seeks an injunction to stop Teachbook and seeks a declaration that Teachbook’s trademark application is void.
This case is quite interesting. Can Facebook prevail in its claim that its mark is famous and thus even the suffix BOOK is protected by its trademark? If it does prevail, then what becomes of all the other websites that use the word BOOK in their names. Take for example the following websites: Kelly Blue Book, Redbook for magazines, the countless websites that use the word Cookbook, Phonebook, MacBook, etc. Will they be precluded from using the word BOOK in the future as their brands expand on the grounds they are diluting a portion of Facebook’s allegedly famous mark? If the court finds that the word BOOK is famous under the federal dilution act, would that mean no entity in the future will ever be able to use the word BOOK in connection with their social networking services? Only time will tell.
Author: John Del Vecchio
October 7, 2010