Back in August 2010, Facebook sued a company named Teachbook.com for trademark infringement and dilution based on the use of the TEACHBOOK mark for a social networking site for teachers. Facebook is located in Palo Alto, and it initially filed suit against Teachbook in the US District Court for the Northern District of California, claiming that Facebook experienced injuries there and thus should be permitted to sue in that venue. Teachbook filed a Motion to Dismiss based on lack of personal jurisdiction and improper venue, or in the alternative, to transfer venue to the Northern District of Illinois, where it is a resident.
The California District Court dismissed Facebook’s case against Teachbook, ruling that Teachbook did not “expressly aim” its infringing conduct at the [northern California] forum. Unfortunately for Teachbook, the dismissal Order also states that Teachbook “committed an intentional act by selecting a confusingly similar trademark to FACEBOOK,” nonetheless, this act was not enough to keep the lawsuit in the State of California. Because Teachbook had no registered users in California, the court found that it had insufficient “personal contacts” to support the continuance of the litigation in the State.
In its defense of the California suit (according to the Order dismissing the case), Teachbook claimed that it chose its name because of the connection of teachers and books. It also claims to have conducted a trademark search prior to adopting its mark, which search revealed 31 “–BOOK” marks for interactive computer services, including 10 “–BOOK” marks that were in use in commerce prior to the FACEBOOK mark. Apparently, the trademark search also indicated that Facebook filed several Extensions of Time to Oppose “–BOOK” mark applications, but had not actually filed any Oppositions (though it had filed one against DATEBOOK in 2007, which Teachbook’s search apparently overlooked).
The fact that other “–BOOK” marks preceded FACEBOOK would seem to favor Teachbook. That said, trademarks aren’t born famous, they must acquire fame. Hence, it is possible that the “–BOOK” suffix has acquired fame since (due to) its adoption by FACEBOOK. Since dilution only applies to marks that were adopted after the prior mark acquired fame, TEACHBOOK could be dilutive of FACEBOOK even while those predecessor “–BOOK” marks are not.
So, off to Illinois the case goes . . . Facebook filed a new case there last Friday (May 6, 2011).
Facebook clearly considers the “–BOOK” suffix to be part of its IP portfolio. It will continue to pursue others using “–BOOK” marks, presumably until a court rules that it has no rights to do so (and that might not even stop it). Whether or not you agree, you are forewarned.