TEACHBOOK Could Infringe, Dilute FACEBOOK Marks

by Thomas Long, Legal Editor, CCH Trademark Law Guide  

Online social networking service provider Facebook could proceed with trademark infringement and dilution claims against an online networking service for teachers (Teachbook.com LLC), the federal district court in Chicago has determined. Facebook sufficiently alleged that its marks incorporating the word FACEBOOK were protectable and that TEACHBOOK was likely to cause consumer confusion and to blur the distinctiveness of the FACEBOOK marks.Validity of FACEBOOK Mark

Facebook’s claims were not subject to dismissal on the ground that “-BOOK” was generic, the court said. While it is sometimes appropriate to vary the weight accorded to the different components of a mark when one component is generic or descriptive, Facebook did not assert blanket rights in the suffix “-BOOK,” but instead was relying on the aggregate effect of its conjoined mark as protectable.

Teachbook offered nothing to rebut the presumption of validity of Facebook’s registered mark. Moreover, even the suffix “-BOOK,” standing alone, could not be considered generic for Facebook’s online social networking services. Even in the age of “e-books,” social networking services did not fall within the category of what one would traditionally call “books,” according to the court.

Likelihood of Confusion

Facebook sufficiently alleged confusion arising from the similarity of the parties’ marks. The textual and aural similarities between the two marks were obvious. Both marks were a combination of the suffix “-BOOK” preceded by fairly mundane, monosyllabic words. In both instances, it was the uninterrupted conjunction of the mundane words with the suffix “-BOOK” that gave the marks their verve, the court said.

With regard to intent, Facebook made a prima facie showing that Teachbook committed an intentional act by adopting a confusingly similar trademark. It was reasonable to infer that teachers searching the Internet for facebook.com could encounter teachbook.com and mistakenly believe that it was somehow affiliated with Facebook.

Teachbook allegedly offered a similar product, and the area and manner of concurrent use of the marks were allegedly the same. Both parties offered similar social networking services through the same channel of trade –the Internet. Facebook’s failure to allege actual confusion and its failure to address the degree of care used by consumers and did not warrant dismissal, the court said.

Dilution

Facebook alleged that its FACEBOOK and related marks were famous –and that they became famous prior to Teachbook’s adoption of its TEACHBOOK mark. Teachbook’s use of the TEACHBOOK mark allegedly impaired the distinctiveness of the FACEBOOK marks and weakened the connection in consumers’ minds between the Facebook marks and Facebook’s services.

Contrary to Teachbook’s contention, a trademark dilution claim did not require proof of consumer confusion, according to the court. A dilution claim can arise where consumers have not been and are not likely to be confused about the source of goods or services offered under the same or similar trademarks.

Facebook, Inc., ND Ill., ¶61,878.