We bring you the latest installment in our continuing coverage of the ongoing Facebook litigation marathon (see our previous blog entries No Laughing Matter, A Question Of Judgment, and Victory For Goliath Predicted). (Facebook, Inc. v. Teachbook.com, LLC)
As the reader may remember, the humorless folks at Facebook have commenced a program of suing anyone with the temerity to adopt a business name including the formative “book.” Among the entities so brought to court is Teachbook.com, LLC which has now filed a motion seeking a stay of discovery while the Court considers its pending motion to dismiss the case.
Teachbook maintains that the marks of the two parties cannot be found confusingly similar because only the word “book” is common to both and that word is not distinctive as to Facebook. Teachbook argues that Facebook is claiming “blanket trademark rights in the word ‘book’ when used in connection with printed publications.”
Facebook responds that it has made no such claim and that this is merely a “straw man” argument, created by Teachbook for the express purpose of being knocked down. It is, nevertheless, Facebook’s position that “the BOOK portion of the mark is distinctive when used with social networking services.”
This brings us to the latest development – Facebook has filed an Opposition in the Trademark Office, seeking to block registration of the mark SHAGBOOK in respect of on-line adult dating services. (Facebook, Inc. v. SNRG Ventures LLC)
Facebook, in its Opposition, notes that “shag” is defined by the World English Dictionary as a verb meaning “to have sexual intercourse with” and argues “on information and belief” that SNRG permits users to post pornographic material on its website. While we have not yet had the opportunity to thoroughly investigate this allegation, Facebook professes a concern that its reputation and goodwill will be damaged by the “prurient goods or services offered by SNRG.”
Whatever the nature of its “goods or services,” SNRG did not take this assault laying down. Much to everyone’s surprise, it has unleashed a massive counterattack, arguing that “facebook” is a generic term which is “incapable of trademark protection” and that Facebook “has engaged in trademark misuse and trademark bullying by abusively using oppositions, litigation and threats of the same to maintain a competitive market advantage.” SNRG further argues that “assuming arguendo that [Facebook’s] marks are called to mind by consumers of [SNRG’s] dating services, the consumers would have understood such reference to be a parody … authorized by the First Amendment to the United States Constitution …” After presenting a few more boring legal arguments, SNRG concludes with a request that all of Facebook’s trademark registrations should be canceled.
In support of this request for cancellation of the Facebook registrations, SNRG alleges facts which, in its opinion, establish a pattern of fraud in the procurement of the said registrations. An examination of the Shagbook Answer to the Opposition reveals that it incorporates many of the factual allegations first presented by Teachbook. Similarly, the parody defense was first raised by Lamebook when it was sued by Facebook. Thus, it appears that a concerted resistance to Facebook’s trademark enforcement campaign is beginning to coalesce. It also appears that Shagbook, in addition to supporting the constitution (at least the first amendment thereof), is an environmentally conscious pornographer – they recycle.
While we await the outcome of these earth-shaking legal matters, we thought we’d visit the Shagbook website.
Reportedly, Facebook is also suing those whose business names begin with "Face." Though I suppose that, in the case of Faceporn, legal action by Facebook might be somewhat understandable. I think they're going a bit overboard with the "-book" thing, however.