Facebook v. Shagbook

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Facebook has recently filed a lawsuit against Shagbook, an adult dating site. It explains that Facebook’s image would be damaged by any registration for the mark Shagbook. Shagbook is a site which allows consenting adults to make location- based searches ‘to hook up with local singles for no strings attached adult dating’.

 Shagbook is not going to take this lawsuit lying down said its founder. He claims he had been using the term ‘Shagbook’ since the year 2000 to refer to his little black book, and created his site in 2006, before Facebook became popular. Shagbook appears to be set on fighting Facebook at all costs.

 Is Facebook abusing its money power?

 Shagbook has accused Facebook of ‘trademark bullying’ and using ‘oppositions, litigation, and threats of the same to maintain a competitive market advantage’.  They state that ‘With billions of dollars in outside investment, Facebook appears to consider the court system, the United State Patent and Trademark Office and TTAB within it to be nothing more than tools it can use to fend off potential competitive threats before they actually materialize’.

 This is not the first time Facebook has gone after companies for names that are similar sounding to their own.  Last year, Teachbook suffered a lawsuit by Facebook for ‘misappropriating the distinctive BOOK portion of Facebook’s trademark’. However, the case was thrown out on a jurisdictional technicality.

 Amongst the other sites that have encountered trademark threats from Facebook, are Placebook for infringement, (which was overcome by renaming the site ‘PlacéBook’) and LameBook.  LameBook is a site parodying Facebook, so it actually decided to follow a strategy of suing Facebook first, which Facebook responded to by suing back.

 ‘Facebook’- Not distinctive enough?

 Shagbook is now planning on using Facebook’s history of trademark disputes against them, claiming that the term FACEBOOK itself is generic.  It argues that the Facebook trademark should never have been granted.

 The accusations of genericity go back to the history of the term ‘FACEBOOK’. Although currently the word ‘Facebook’ is synonymous with the Social Networking site, the term has been around before Facebook was even created. It has been used for decades to describe publications created by students, faculty and universities. Facebooks often contained pictures and limited biographical data.

 According to theRegister.co.uk, the term ‘FACEBOOK’ has been used since 1983, whereas the social networking site was set up in 2004, 20 years later.

 Shagbook argues that moving these facebooks online was just a natural progression.

 Facebook’s accusation that Shagbook has violated Facebook’s trademark, is based on the reasoning that the site’s name is similar in ‘appearance, sound meaning, and commercial impression’, and accuses the site of trying to ‘trade off the fame of Facebook’.                      

 Shagbook’s response is that their site cannot be confused with Facebook’s, as Facebook has often made it clear that it is not a dating site in its marketing strategies, and has even removed individuals who have been using the site as a ‘dating site’. Shagbook believes that therefore, Facebook cannot argue that it provides services that are similar to the ones provided by Shagbook.

Some think this case might be a tough one for Facebook, with even the site’s own trademark being put into dispute.