LIKE Controversy? Facebook TMs lots of LIKE marks

Posted by | September 15, 2011 | General | No Comments

Facebook is known to be pretty aggressive (some would say a bully), when it comes to its intellectual property rights.  I am sure Facebook keeps multiple intellectual property lawyers, legal departments and law firms very, very, very busy.  This year alone, Facebook has had prominent cases against Lamebook, Teachbook and Shagbook.  At least it makes for good blogging!

Facebook was in the news again recently, because Commissioner Thilo Weichert, of the Independent Centre for Privacy Protection in the northern German state of Schleswig-Holstein apparently banned Facebook’s Like button, as reported by Emil Protalinski on ZDNet last month.  The article states that use of the Like button enables Facebook to track its users activity (um, what on Facebook doesn’t enable Facebook to track it users, but OK), which violates German privacy laws.  The Commissioner therefore ordered Facebook users in his state to cease use of the Like button by September 30, 2011 or face significant financial penalties.

WOW!  You would think that Facebook — not the Germans — would be facing financial penalties for the data tracking.  I mean, if a consumer wants to encourage direct marketing, which I presume to be the result of Facebook’s data collection, why should anyone, especially their government, protect them from themselves?  Last week, Techdirt reported that that a German news site, Heise, created a workaround to enable use of the Like button sans tracking, which seemingly solves the issue.

So, where were we?  Oh, that’s right, the Facebook Like button.  Without much fanfare, Facebook has taken steps to protect its rights in the LIKE marks, and I don’t think LinkedIn is going to like it since both sites have “Like buttons” (though Facebook’s includes a thumbs up icon, while LinkedIn’s just says Like).

Facebook filed 14 federal trademark registrations for LIKE back in April, 2010:

[framed_box]

(1)   85/020,058 – Computer software development tools . . .

(2)  85/020,062 – Compiling of information into computer databases; marketing, advertising and promotion services; market research and information services . . .

(3)  85/020,064 – Financial transaction processing services; bill payment services . . .

(4)  85/020,066 – Providing access to computer databases in the fields of social networking, social introduction and dating . . .

(5)  85/020,068 – Providing computer, electronic and online databases in the field of entertainment . . .

(6)  85/,020,071 – Creating on-line virtual communities for registered users to organize groups and events, participate in discussions, and engage in social, business and community networking . . .

(7)  85/020,073 – Social introduction, networking and dating services . . .

(8)  85/020,077 – Computer software development tools . . .

(9)  85/020,080 – Compiling of information into computer databases; marketing, advertising and promotion services; market research and information services . . .

(10)   85/020,081 – Financial transaction processing services; bill payment services . . .

(11)  85/020,082 – Providing access to computer databases in the fields of social networking, social introduction and dating . . .

(12)  85/,020,083 – Providing computer, electronic and online databases in the field of entertainment . . .

(13)  85/020,084 – Creating on-line virtual communities for registered users to organize groups and events, participate in discussions, and engage in social, business and community networking . . .

(14)  85/020,085Social introduction, networking and dating services . . . [/framed_box]

As for the status of these applications:

[framed_box]

(1) Applications 77/629,367; 77/629,390; 77/793,694 & 77/938,128 and registrations 2,920,968; 2,920,969; 3,595,014; 3,740,124 & 3,849,036 cited against it

(2) Applications 77/629,367; 77/629,390; 77/793,694 & 77/938,128 and registrations 2,920,968; 2,920,969; 3,595,014; 3,740,124 & 3,849,036 cited against it

(3) Applications 77/629, 367; 77/629,390 & 77/938,128 and registrations 2,920,968; 2,920,969; 3,595,014; 3,740,124 & 3,849,036 cited against it

(4) Applications 77/629, 367; 77/629,390 & 77/938,128 and registrations 2,920,968; 2,920,969; 3,595,014; 3,740,124 & 3,849,036 cited against it

(5) Applications 77/629,367; 77/629,390; 77/793,694 & 77/938,128 and registrations 2,920,968; 2,920,969; 3,595,014; 3,740,124 & 3,849,036 cited against it

(6) Applications 77/629,367; 77/629,390 & 77/938,128 and registrations 2,920,968; 2,920,969; 3,595,014; 3,740,124 & 3,849,036 cited against it

(7) Applications 77/629,367; 77/629,390 & 77/938,128 and registrations 2,920,968; 2,920,969; 3,595,014; 3,740,124 & 3,849,036 cited against it

(8) Applications 78/936,428; 78/981,806 & 77/763,441 cited against it

(9) Registrations 3,849,036 & 3,722,753 cited against it

(10) Will be Published on 09/20/2011

(11) Registration 3,849,036 cited against it

(12) Registration 3,849,036 cited against it

(13) Registration 3,849,036 cited against it

(14) Registration 3,849,036 cited against it [/framed_box]

One would think that Facebook and its fancy lawyers would have noticed all these potential problems before filing their applications.  So what gives?  Did they hope the Examiner wouldn’t notice?  Did they just not care?  We can only speculate as to why Facebook took this approach, and what the result will be.

Facebook probably will spend a ton of money arguing with the PTO, perhaps file a few Cancellation Petitions, and then buy out the remaining registrants in order to get its mark & logo registered.  Like it or not, they’ll probably be successful.

About Lara

Lara Pearson is a trademark attorney with Exemplar, where she also serves as the firm's Sustainability Steward. Lara's legal practice focuses on trademark and copyright law, including: intellectual property audits; trademark search & clearance; trademark and copyright registration & maintenance; intellectual property transfers; transactional work; and dispute resolution, including litigation when necessary. Lara primarily represents other social enterprises -- those leveraging their businesses and brands as catalysts for positive social and environmental change. Such businesses engage in CSR (Corporate Social Responsibility) to have a positive "triple bottom line" of people, planet and profit. As Exemplar's Sustainability Steward, Lara works with others in her law firm to measure and reduce the firm's carbon emissions and encourage engagement in social responsibility initiatives, including pro bono legal work and volunteering. Lara is a proud member of the Social Venture Network. Brand Geek is a member of 1% for the Planet and a Certified B Corporation, whose Incline Village office is certified under the regional Keep the Sierra Green program. Exemplar Companies is the most innovative professional services firm in the New Economy. Our unique, diversified expertise spans the disciplines of corporate law, business advisory, and capital/investment banking to better meet the needs of our high-potential customers. We have assembled a comprehensive suite of service to meet the complex issues facing companies in today’s challenging business environment. Our unique, holistic approach ensures the growth and success – and greatly increases the competitive advantage - of our customers. The Exemplar team is comprised of knowledgeable, highly skilled experts in a wide range of industries and disciplines. They work closely with our customers to provide trusted advice, incomparable support, expert guidance and the ultimate competitive advantage as they accelerate their businesses and position themselves to transform industries.

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