Teachbook seeks to school Facebook through its filing of a motion to dismiss in Facebook’s second attempt to sue it for trademark infringement. Facebook initially sued Teachbook in California, which case was dismissed for lack of personal jurisdiction. Facebook then filed a complaint against Teachbook in its home state of Illinois — where the case now is pending — for:[framed_box]
Federal trademark dilution,
Common law trademark infringement,
Common law unfair competition,
Violation of the Anti-cybersquatting Consumer Protection Act (ACPA),
Violation of the Illinois Uniform Deceptive Trade Practices Act, and
Violation of the Illinois Trademark and Registration Act.[/framed_box]
Facebook claims that its FACEBOOK mark is famous for online networking services. Facebook also claims that the TEACHBOOK mark is substantially similar to FACEBOOK and that Teachbook is “touted as a substitute for FACEBOOK, which many schools forbid their teachers to use.” Teachbook’s motion to dismiss asserts:[framed_box]
No likelihood of confusion,
Dissimilarity of marks,
Admission of contradictory facts,
Facebook has no distinctive rights in BOOK,
BOOK has never been registered on its own,
BOOK is generic for directory services,
Dissimilarity of services,
No allegations of actual confusion or intent to trade off Facebook’s goodwill, and
Failure to allege facts that could lead to consumer confusion.[/framed_box]
Motions to dismiss for failure to state a claim upon which relief can be granted are rarely successful. Whether there is likelihood of confusion, similarity of marks, and similarity of services are appropriately decided by the fact finder (unless the evidence strongly supports one party’s position, but at this stage there is no evidence, so it’s too early to tell). Teachbook relies on the following facts to support its motion to dismiss:[framed_box]
Dissimilarity of services and consumers,
Dissimilarity of marks,
Facebook admitted FACTBOOK is dissimilar to FACEBOOK,
PTO records contain over 100 formative-BOOK marks for “relevant services,” and
BOOK is not distinctive.[/framed_box]
My guess is that the court will convert Teachbook’s motion to dismiss into a summary judgment motion, which it then will deny because there appear to be facts that remain in dispute. Strategically speaking, I think this motion is Teachbook’s way of passing Facebook a note stating, “meet me in the playground after school. You’re gonna get your ass whooped!” One thing’s for sure, Teachbook has made clear that it’s not going to be bullied.
Teachbook’s President, Greg Shrader, told me yesterday that his company is prepared to go to the mat with Facebook. “We have no intention of going away,” Greg said. He believes (and his counsel argued in their motion to dismiss) that BOOK is generic for directory and networking services and that FACEBOOK and TEACHBOOK are too dissimilar for there to be any likelihood of consumer confusion. Greg told me that he understands the BOOK part of his mark to be generic, so he cannot prevent others from using that, but Facebook just doesn’t seem to get it. Greg believes Facebook is abusing the legal process to escalate costs to any limit they choose, making the case too expensive for most companies to fight back. He assured me Teachbook has sufficient funds on hand to see this case through and he didn’t back track when I suggested that will require hundreds of thousands of dollars, maybe even millions. Greg told me that while there are more productive things he could be doing with his time and money, his hope is that this case will create a precedent upon which others being bullied by Facebook can rely. He’ll have to win for that to dream to become reality, but perhaps he can do so with a little help from his friends . . .
As I mentioned in my May 25, 2011 update, Teachbook created a non-profit legal defense fund called The Trust Agreement for the Prevention of Intellectual Property Bullying to capitalize (literally) on the outpouring of support Teachbook received after Facebook filed suit against it in California. The fund is run by a group of trustees with whom I am hoping to connect next week in order to obtain more information about the organization and how it will raise and distribute funds (I can think of several potential beneficiaries, as I’m sure most trademark attorneys can). Look for a post on it in the next couple weeks.
Sadly, principles don’t win lawsuits. Although courts administer justice, litigation often isn’t just. Often in litigation, the party with the deepest pockets wins. Litigation risk analysis involves analyzing facts and law, as well as your opponent’s propensity to fight and the resources they have to invest the fight.