San Diego Trademark Attorney® Blog

Results tagged “Facebook” from San Diego Trademark Attorney® Blog

Facebook Argues TIMELINES is a Generic Trademark, Rival Disagrees

March 11, 2013,

facebook.jpgSan Diego - Timelines, Inc. argued in an opposition filed Wednesday that the company's TIMELINES trademark is not too generic to deserve protection and that Facebook, Inc.'s timeline feature on its popular networking site infringes the trademark.

The company filed the opposition in response to Facebook's motion for summary judgment requesting that the lawsuit be dismissed. The trademark infringement lawsuit began when Timelines sued Facebook one week after it learned the social media website had launched a new feature that allows users of the website to create virtual timelines with photos, videos, and other media devices.

As Timelines' website Timelines.com provides users a relatively similar online service, the company filed the lawsuit against Facebook alleging trademark infringement and claiming that Facebook's new feature would drive Timelines out of business.

In its motion for summary judgment, Facebook argued that though Timelines has three U.S. trademark registrations for the word TIMELINES in conjunction with software services provided over the internet, the term is generic and does not warrant protection. The January 31st motion claimed that since the term is defined as "an arrangement of events or other information in chronological order," and Timelines provides a service that allows users to record and connect events in a specific order, the trademark is merely descriptive of its services.

Timelines countered that genericness should be determined by a jury, rather than in a motion for summary judgment, due to the fact-intensive nature of the process. Timelines also countered Facebook's claims that the term's genericness is evidenced by its appearance in numerous dictionaries.

"Facebook forgets that its very name comes from the 'generic' name that was given to certain college picture books known as 'face books,'" Timelines said. "Moreover, Facebook's own trademark history demonstrates that it seeks trademark protection for terms that appear in dictionaries, including 14 trademark applications for the term 'like' alone, almost all of which concern Facebook's 'Like' button, which its users click on when they ... like something."

Timelines is seeking damages and a permanent injunction prohibiting Facebook from using TIMELINES or any similar version of the trademark. Facebook is requesting a declaratory judgment that the website's timeline feature does not infringe Timelines' trademarks in addition to cancellation of those trademarks.

Facebook Abets Counterfeit NFL Gear Sales, Lawsuit Says

October 23, 2012,

football.jpg San Diego - A seller of officially licensed National Football League merchandise filed a putative trademark infringement class action against Facebook Inc. on Monday over its alleged complicity in publishing online advertisements for fake NFL apparel, accessories and more.

Inkies Sports Inc., which does business as Krystal's NFL Shoppe, is seeking to represent a class of retailers and wholesalers of officially licensed NFL apparel who have been harmed in their business by purveyors of counterfeit goods advertised on websites like Facebook, according to its complaint in New Mexico federal court.

As of 2011, ads for counterfeit NFL merchandise started showing up in sponsored ads on Facebook with increasing frequency, offering jerseys and other items for cut-rate prices alongside "pictures of what appears to any reasonable person to be authentic, officially licensed NFL merchandise," the complaint says.

"There is no way for a Facebook user to determine from the pictures and the text which accompanies the counterfeiters' ads whether the merchandise is authentic or not," it says.

Inkies says it began paying for sponsored ads on Facebook in February, but quickly discovered that its own marketing efforts were being overshadowed by those of the counterfeiters.

"Ads for counterfeit goods are regularly displayed on Krystal's Facebook page, leading even loyal customers to question whether these ads are supported, or even sponsored, by Krystal's," the complaint says. "Krystal's has inadvertently been placed in the untenable position of actually lending credence to the counterfeit ads, by virtue of Facebook's display of those advertisements on Krystal's page."

Inkies has lodged multiple complaints with Facebook about the ads to no response, according to the company.

The economic impact of the fraudulent ads on Inkies and other class members will probably run into millions of dollars, given the cut-throat nature of the world of low price internet retail, Inkies asserts.

Once a consumer clicks on one of the counterfeiters' ads and places and order, the merchandise arrives postmarked from China, and it immediately becomes apparent that the merchandise is substandard, Inkies says. Since the Chinese government blocks access to Facebook, counterfeiters in China need an intermediary, Inkies claims, such as the advertising firm AdSage, which is also named as a defendant in the complaint.

Facebook Removes Page After Trademark Infringement Complaint

August 19, 2011,

facebook.jpgSan Diego, CA - Facebook has removed a page from its website as a result of a trademark complaint submitted by the Seventh-Day Adventists.

A group calling itself "Adventists for Life" was the culprit. Seventh Day Adventists have trademarked "Adventist" and the church activily polices its trademarks.

The church also sent a cease and desist letter which asked Adventists for Life to abandon the domain name www.adventistsforlife.org. The domain name is currently parked.

An interesting question is whether the ADVENTIST trademark is merely descriptive of the goods and services being offered. In other words, a Catholic church would be hard-pressed to register the trademark CATHOLIC for use in relation to religious services. A trademark that is generic or merely descriptive of the goods or services at issue generally cannot be protected. Perhaps Adventists for Life should have sought legal counsel to respond to the complaint?