Newsletter - Volume 56, September 2010
Face-off, Facebook, Inc. v. Teachbook.com LLC
In August 2010, the social media company, Facebook, Inc. ("Facebook") filed suit
in the Northern District of California, San Jose, against Illinois-based
Teachbook.com LLC ("Teachbook"). Facebook has alleged misappropriation of the
allegedly distinctive "BOOK" portion of Facebook's trademark by the Defendant,
Teachbook, saying it unfairly adopted the suffix as a reference to Facebook's
popularity and reputation.
Facebook has raised allegations based upon federal trademark infringement,
federal and state trademark dilution, federal false designation of origin,
common-law trademark infringement, common-law unfair competition, and
cybersquatting. Facebook has requested preliminary and permanent injunctive
relief enjoining the Defendant from using its TEACHBOOK mark, or any similar
marks thereto.
In its complaint, Facebook describes itself as "a prominent provider of online
networking services...dedicated to making the web more social, personalized,
smarter and relevant." Facebook states its facebook.com website is the second
most trafficked website in the United States with over 150 million users.
Facebook argues that it has used its mark continuously in commerce since 2004,
noting that FACEBOOK is highly distinctive with regard to online networking
services. By virtue of this use, Facebook alleges that its mark has achieved
"famous" status within the meaning of Section 43(c) of the U.S. Trademark Act,
15 U.S.C. Section 1125(c).
Defendant, Teachbook, is "A Professional Community for Teachers," according to
its website where teachers can share lesson plans, instructional videos and
other educational resources. Facebook alleges that Teachbook has placed itself
as a "Facebook substitute" as "Many schools forbid their teachers to maintain
Facebook...accounts...With Teachbook, you can manage your profile so that only
other teachers and/or school administrators can see your personal information."
Facebook alleges that, essentially, Teachbook is trying to become Facebook "for
teachers."
Though Teachbook has not yet filed its Answer, Greg Shrader, managing partner
for Teachbook, has stated that Teachbook will fight the action.
Facebook has taken an aggressive stance against trademark applications
containing either "FACE" or "BOOK" since 2007. The company has filed trademark
oppositions or extensions of time to oppose 115 trademark applications since
2007, according to the Trademark Trial and Appeal Board's website, many of
which are based on the junior mark's adoption of "BOOK." It appears that
Facebook's stance on "BOOK" users, and the concern that it could dilute the
FACEBOOK mark, was established several years prior to this current TEACHBOOK
action. It also appears that most of these actions settled, so many of the
situations avoided the analytical scrutiny of the dilution and
likelihood-of-confusion tests before the Trademark Trial and Appeal Board.
Even if Facebook is correct in its claim that FACEBOOK has become famous under
the trademark statute, it may still be a leap to establish that the adoptions
of marks containing "FACE" or "BOOK" dilute and/or cause confusion with the
FACEBOOK mark. It will be interesting to see how far the federal court allows
that fame to stretch. Will the federal court determine that TEACHBOOK will
likely cause confusion with FACEBOOK given the shared term "BOOK"? Currently,
there are over 790 trademark registrations containing "book" in classes in
which Facebook operates, 9, 38, 41 and 42. These registrations have all been
coexisting on the United States trademark register. Though this is not, by any
means, an absolute determination of whether confusion or dilution will result
in the marketplace, it will be interesting to see how the Court treats the
visual, aural, and conceptual differences in TEACHBOOK versus FACEBOOK. On the
other hand, although TEACHBOOK is comprised of two words couched in the
educational arena with "Teach" and "Book," one does wonder if Teachbook would
have adopted that particular mark if Facebook had never existed.
The 2010 KSR Guidelines Update – Useful, but Limited
As mentioned in earlier editions of our Newsletter, a U.S. Supreme Court
decision issued in April 2007 (KSR Int'l. Co. v. Teleflex Inc., 550 U.S.
398 (2007); "KSR") challenged prevailing thinking on obviousness
determinations under U.S. patent law. From the practitioner's perspective, the
decision arguably heightened patentability standards and made successful patent
prosecution more difficult. Since issue, the case has been the subject of a
great deal of scrutiny in the patent field.
In October 2007, the U.S. Patent & Trademark Office (USPTO) issued new
guidelines for USPTO personnel determining whether a given claim was obvious.
The USPTO recently updated these guidelines in view of the body of caselaw
promulgated under KSR (2010 KSR Guidelines Update, published at
Federal Register 75(169):53643 (September 1, 2010); "Update").
The Update serves to reiterate basics of making an obviousness determination,
and to place recent obviousness cases within categories of reasoning identified
in KSR. We see the Update as an analysis of caselaw, spun from the USPTO
perspective, that will serve as a useful basis for USPTO obviousness rejections
and withdrawal of rejections for the foreseeable future. We discuss a few
features and limitations of the Update below.
Update — Basics of making an obviousness determination
The Update emphasizes that obviousness determinations must be made in view of
the facts of the case, and based on foundations of obviousness laid out in Graham
v. John Deere (383 U.S. 1 (1966)) (requiring consideration of the scope
and content of the prior art, differences between the claims and prior art, the
level of ordinary skill required in the art, and secondary indicia of
nonobviousness).
The effect of KSR, according to the Update, is to provide Examiners with
a flexible approach to considering the facts of the case. However, Examiners
are still required to provide a reasoned explanation as to why a skilled person
would find an invention obvious at the time the claimed invention was made.
This reasoning can include considering creative or routine steps the skilled
person might make in view of the prior art. The Update notes that no absolute
or "per se" rules are intended to exist with regard to obviousness
determinations, and emphasizes that KSR applies across all technologies,
including "unpredictable" arts such as biotechnology.
Update — Categorizing recent cases
In addition to the already-recognized teaching-motivation-suggestion test, KSR
identifies six courses of reasoning for Examiners to use when making an
obviousness determination. The Update categorizes recent caselaw into several
of these courses of reasoning, in an attempt to pull recognizable rules from
the cases for the use of all.
For instance, the Update states (section 4A, Example 4.1) that when known
elements are combined in a known manner to obtain predictable results, the
invention may still be nonobvious if the combination of the elements involves
such additional effort that no skilled person would undertake it without a
recognized reason to do so (citing In re Omeprazole Patent Litigation,
536 F.3d 1361 (Fed. Cir. 2008), where an omeprazole pill having 2 coatings was
considered nonobvious because the prior art did not disclose certain
difficulties in coating the pill).
The Update also reports (Section 4A, Example 4.4) facts showing that an
"apparent reason to combine" elements may serve as a reason for upholding a
determination of obviousness (citing Ecolab, Inc. v. FMC Corp., 569 F.3d
1335 (Fed. Cir. 2009), where a method of treating meat by spraying with an
antibacterial solution was obvious because the skilled person would do this to
treat and remove bacteria on the surface of meat).
One problem we see with the Update is that, while it focuses on facts important
in a given case, it does not provide a great deal of guidance on how USPTO
personnel should choose between facts. Facts teaching away from an invention
and providing an apparent reason to combine elements may easily coexist within
a given case; the weight given by the Examiner to either fact may be the
difference between allowance and rejection. Our only answer to such problems is
to rely on good old-fashioned lawyering to convince an Examiner, as true pre-KSR,
post-KSR and beyond.
Generic gTLDs—Possible Morality and Public Order Hold-up
The efforts of ICANN to bring new gTLDs to the online community continue to move
at a slow pace. The Fourth version of the Draft Applicant Guidebook concluded
its public comment period on July 21, 2010, and ICANN has yet to release its
Summary/Analysis of comments. Although it appears that compromise and consensus
on IP protections in new gTLDs is essentially finished, additional issues
surrounding the process may keep the process churning before new gTLDs come to
fruition.
The latest Guidebook included the incorporation of specific trademark
protections that were updated based on recommendations from the Special
Trademarks Issues Review Team, along with consideration of prior public
comments. These near final versions provide trademark protection mechanisms
including: the Uniform Rapid Suspension, the Trademark Clearinghouse, and the
Post-Delegation Dispute Resolution Proposal.
Other remaining issues with competing interests include resolving the question
of whether registries and registrars should have cross ownership. This complex
issue involves whether a new gTLD must have a separate registrar for a
registry. This could affect a company gTLD (i.e. .IBM, .CANON) by potentially
requiring use of a separate registrar, even though domain names in the new gTLD
might be limited to those registered within the company.
Another issue that has brought varying opinions is in regards to the Morality
and Public Order objection, which is one of four bases for objecting to a new
gTLD. The other bases for standing to object are string-confusion objections,
legal-rights objections, and community objection. The current proposal provides
that objections to applied-for gTLDs that offend moral and public order be
decided by independent experts. Of concern to some is that many strings may be
offensive in one language and benign in others or that one person, religion or
organization's beliefs of morality may be strongly divergent from those of
another. Although the Government Advisory Committee of ICANN has voiced
objections to the current mechanism in the Guidebook for addressing potential
objections, it has not provided any specific guidance for an alternative
mechanism that would recognize the relevance of national laws and effectively
address gTLD strings that raise national, cultural, geographic, religious
and/or linguistic sensitivities.
Other concerns being addressed and investigated include the possibility of
providing support to new gTLD applicants from organizations and areas of the
world where financial and technical resources may be limited. Issues also
remain regarding Internationalized Domain Name (IDN) gTLDs and IDN ccTLDs
(country-code TLDs, such as .US, .DE, .CN). In addition, ICANN has yet to
provide a final analysis and summary of the public comments submitted on the
Fourth Draft Applicant Guidebook.
As there are a number of issues that still remain to be resolved before the new
gTLD process is finalized, the application process for new gTLDs is likely not
going to occur until at least sometime in 2011. Although the new gTLDs concept
has been ongoing since 2005, ICANN no longer has a timeline in place for new
gTLDs' anticipated start.
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Newsletter Volume 72, January 2012
