March 10, 2014 at 12:27 pm
Small businesses are facing a new brand of bullying from larger companies, seeking to undermine them with expensive trademark infringement lawsuits, called trademark bullying. The goal is to burden non-famous and non-competitive brands with trademark restraints. Some experts are calling it extortion – it is bullying when you are using litigation to enforce rights for a trademark that the law says you don’t reasonably have.
Facepets.com, a pet-themed social network, based in Nashville, has accused Facebook of being a “trademark bully”, after a dispute over the “Facepets” trademark. The company, whose site allows users to discuss and post pictures of their pets, applied for the “Facepets” trademark in the US last year, after which Facebook asked for an extension of the deadline for opposing the mark. Between August and the December deadline, Facebook contacted Facepets.com and claimed that the “Facepets” mark would cause confusion with Facebook’s. The social network told Facepets.com that it should abandon the trademark.
Facebook has since opposed the mark at the Trademark Trial and Appeal Board, although the papers were filed a day after the agreed deadline. Facebook claimed that “Facepets” is likely to cause confusion and see Facepets as affiliated or sponsored by Facebook. To show that its marks are “famous”, Facebook argued that they enjoy a high degree of consumer recognition and that its service has an “enormous and loyal user base”.
In a counter move, Facepets has filed the claims in a lawsuit at the US District Court for the Middle District of Tennessee. In its suit, filed before the February 24 opposition, Facepets.com is seeking clarification that it does not infringe or dilute Facebook’s trademarks and that the social network is a “trademark bully”, a term used to describe companies that use their rights to harass other businesses.
Since Facepets seems like a small, local group in Nashville, it would seem Facebook is aggressively pursuing the company in an unwarranted way. On the other hand, Facepets has applied for a trademark that would give it nationwide rights, so Facebook would have to do something to ensure that that didn’t become a nationwide registration.
Both the lawsuit and the TTAB case can proceed simultaneously, but will have different outcomes. The types of facts that a court would look at are broader and the remedy is different – in the TTAB the remedy is whether or not the mark should be registered, and in the court it is whether the mark can be used or not in commerce.
Law firms representing the companies have not yet issued any statements, and we will have to wait to see how this conundrum plays out.