October 2011 Issue
Facebook, Inc. v. Teachbook.com LLC,
2011 WL 4449686 (N.D. Ill. Sept. 26, 2011)
The Northern District of Illinois refused to dismiss Facebook, Inc.’s (“Facebook”) complaint for trademark infringement and dilution under federal and state law against Teachbook.com LLC (“Teachbook”), the operator of a social networking website called TEACHBOOK for teachers. The court rejected the defendant’s attempt to boil the case down to the suffix “BOOK,” which the defendant claimed was generic for the parties’ services. Considering the parties’ marks as a whole, the court held that the defendant’s choice of TEACHBOOK—“a combination of the suffix-BOOK preceded by [a] fairly mundane, monosyllabic word”—for social networking services was “no accident” in light of Facebook’s claimed “ubiquity.”
Facebook sued Teachbook, a social networking website targeted to teachers, asserting trademark infringement and dilution. Facebook alleged continuous use of its FACEBOOK marks since 2004, and owns multiple registrations for its FACEBOOK marks. Facebook alleged that Teachbook “trad[ed] on the fame the FACEBOOK mark has achieved” when it positioned its service as a “substitute for Facebook,” and by targeting teachers, some of whom are prohibited from having Facebook accounts by their employers.
Before analyzing Facebook’s infringement and dilution claims, the court dealt with the threshold issue of the genericness of the “BOOK” portion of the FACEBOOK mark. Relying on the decision in Le Book Publishing v. Black Book Photography, Inc., 418 F. Supp. 2d 305 (S.D.N.Y. 2005), where the court granted a motion to dismiss a trademark infringement claim by the owner of the mark LE BOOK NY for print directories against the mark THE BLACK BOOK for similar directories, Teachbook argued that the shared term “BOOK” in both parties’ marks is generic.
Facebook responded to Teachbook’s arguments regarding genericness by noting that it was not asserting “blanket trademark rights in the suffix-BOOK” but instead was relying on its ownership of a composite FACEBOOK mark.
The court declined to dismiss Facebook’s complaint based on Teachbook’s arguments regarding genericness. The court refused to rely on Le Book and other similar cases because, unlike the marks in those cases, the dissected term “BOOK” was not generic as applied to Facebook’s services. The court explained that “[e]ven in this age of ‘e-books,’ social networking services do not fall within the category of what one would traditionally call ‘books.’” The court also agreed with Facebook that it was not appropriate to “disaggregate” the FACEBOOK mark by focusing on the suffix “BOOK.” The court noted that nothing about the “FACE” and “BOOK” elements of the mark made “one more salient than the other. Rather it is the aggregate effect of the conjoined parts that gives the mark its distinctiveness.” The court concluded that, in light of the “ubiquity Facebook claims its mark has achieved, one could reasonably infer that the choice of the TEACHBOOK mark—which, like the FACEBOOK mark, is a curt, two-syllable conjunction of otherwise unremarkable words—to offer a similar service in the same medium was no accident.”
After deciding the issue of genericness, the court turned to the issue of likelihood of confusion. The court focused its analysis on the following three likelihood of confusion factors: (1) similarities between the marks; (2) actual confusion; and (3) intent.
The court held that Facebook adequately alleged similarities between the marks to survive Teachbook’s motion to dismiss, observing that “[b]oth marks are a combination of the suffix-BOOK preceded by fairly mundane, monosyllabic words. And in both instances, it is the uninterrupted conjunction of the mundane words with the suffix-BOOK that gives the marks their verve.”
Teachbook asserted that failure to point to any instances of actual confusion was a fatal omission “in light of Facebook’s claim to have an ‘enormous and loyal user base.’” The court disagreed and held that failure to allege actual confusion did not warrant a dismissal of a trademark infringement claim.
With regard to the intent factor, Teachbook pointed to a statement on its website that purportedly distinguished its services from those of Facebook and rebutted the allegation of bad intent:
Many schools forbid their teachers to maintain Facebook and MySpace accounts because of the danger that students might learn personal information about their teachers. With Teachbook, you can manage your profile so that only other teachers and/or school administrators can see your personal information, blogs, posts, and so on.
The court held that nothing in the above language prevented consumers from mistakenly assuming that Facebook expanded into offering a specialized social networking service for teachers and, “in order to draw on its famous name, decided to call that service TEACHBOOK.” The court relied on the Seventh Circuit opinion in Eli Lilly & Co. v. Natural Answers, Inc., 233 F.3d 456, 465 (7th Cir. 2000), where the court found likelihood of confusion between the marks PROZAC and HERBOZAC because, “even though the defendant was offering an alternative to ‘Prozac,’ it was doing so by unfairly invoking the fame of the ‘Prozac’ name.” The court ultimately denied Teachbook’s motion to dismiss Facebook’s trademark infringement claim.The court also denied Teachbook’s motion to dismiss Facebook’s trademark dilution claim. Notably, the court rejected Teachbook’s argument that a degree of similarity necessary to establish dilution is higher than that which is required to prove trademark infringement. The court relied on the recent Ninth Circuit decision in Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 633 F.3d 1158, 1172 (9th Cir. 2011), which rejected a heightened “identical or nearly identical” standard of similarity for trademark dilution claims.
The decision has two notable take-aways. First, with regard to Facebook’s trademark infringement claim, the case reaffirms the broad scope of protection afforded to well-known marks. The court based its decision largely on a finding that Facebook sufficiently pleaded Teachbook’s intent to coin a mark that would play off Facebook’s fame and success. Second, this decision reaffirms the recent Ninth Circuit Levi Strauss decision, which rejected a heightened standard of similarity of marks for trademark dilution claims.