A Question of Judgment

Submitted by patentadmin on Thu, 07/07/2011 - 10:46

As we previously wrote (see: No Laughing Matter), the folks at Facebook lack a sense of humor. Now, it appears that they also lack good business judgment. (Facebook, Inc. v. Various, Inc. et al.)

Facebook is known by everyone on planet Earth. Facebook owns the federally registered service mark FACEBOOK. Various is the owner of the online “adult” (according to Various) or “pornographic” (according to Facebook) networking service FACEBOOK OF SEX. Various is also the owner of the federally registered service mark FRIEND FINDER.

Facebook has sued Various and its affiliates, alleging infringement of the FACEBOOK mark and, in the same lawsuit, launching a pre-emptive attack against the Various FRIEND FINDER mark, claiming that either the mark is fatally “descriptive” or that the use by Facebook is a legally permitted “fair use.”

Various, not to be outdone, seeks cancellation of the FACEBOOK mark, on the grounds that it is an unprotectable generic term, and counterclaims against Facebook for infringement of the FRIEND FINDER mark. Various also avers that it has already “voluntarily” discontinued use of the “Facebook of Sex” term and that the suit by Facebook on the eve of a “public offering” (translation: they’re going to sell stock) is anti-competitive “bullying.” Finally, in a transparent effort to convey an image of righteous indignation, Various asserts that Facebook violated the Federal Rules of Evidence (for the anal-retentive reader, it's F.R.E. 408) by improperly disclosing the details of pre-litigation settlement talks.

At this point, we will admit that we do not understand the logic of Facebook in initiating this legal dogfight. Various had ALREADY CEASED use of the asserted mark. Facebook put its mark at risk for what? Any money it might collect in damages, should it prevail, will have no major impact on its profitability. In addition, it faces the counterclaim brought by Various. From our point of view, Facebook would have been better advised to simply declare victory when Various ceased use of the disputed term and considered the matter closed.

We can’t wait to see how the case plays out.

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