Facebook prevents registration of FACEMAIL

In Facebook Inc v Think Computer Corporation (Opposition 91198355), the Trademark Trial and Appeal Board (TTAB) has sustained Facebook’s opposition to the registration of FACEMAIL for services in Class 38 of the Nice Classification, including “email and instant messaging services”.

The applicant, Think Computer Corporation, is operated by CEO Aaron Greenspan, who was Facebook CEO Mark Zuckerberg’s former Harvard colleague, turned archenemy. This is not the first time the two companies have been on opposite ends of a trademark dispute; in 2009 the parties settled a cancellation actino brought by Greenspan over the FACEBOOK mark itself.

In refusing to register FACEMAIL, the TTAB focused upon the fame of the FACEBOOK mark, evidenced by articles in reputable publications like Time magazine and Newsweek. The TTAB carefully noted that these articles spoke to “the perception of the authors and the readers”, rather than the truth of Facebook’s fame asserted in those publications. Also notable was Facebook’s fame survey, in which 75% of 406 respondents thought of Facebook when asked about “social networking sites on the Internet,” and in which approximately 95% of respondents stated they knew the company.

The TTAB went on to discuss the similarity of the services to which the marks applied, finding them partially identical insofar as they both covered “transmitting/providing instant messaging services”. Relying on that determination, the TTAB presumed the channels of trade and classes of purchasers to be the same, finding further support for the former in applicant’s admission that the parties shared the internet as a channel of trade. As to similarity of the marks, the TTAB concluded that 'face' was dominant in FACEBOOK, and discounted the value of 'mail' as a descriptive element entitled to less consideration in a likelihood of confusion determination. The TTAB observed that the public has come to associate FACEMAIL with Facebook, and has done so independent of Facebook’s use of the mark, likening the situation to BIG BLUE for IBM and AMEX for American Express.

Despite the lack of an opportunity for any actual confusion resulting from the intent-to-use application, the TTAB also found Facebook’s likelihood of confusion survey probative. In that survey, 30% of respondents assumed that FACEMAIL was a Facebook product, and the TTAB noted that 30% was “significant” for purposes of the likelihood of confusion analysis. Thus, the TTAB sustained the opposition and refused registration.

Samuel Eichner, Ladas & Parry LLP, New York