Tuesday, March 27, 2012

Behind the Headlines: Can Facebook Trademark "Book" in the User Agreement?

Recently, there has been a series of headlines proclaiming that Facebook is attempting to trademark the word “book” by placing it in the Statement of Rights and Responsibilities (pretty much the Terms of Service). The exact language reads as follows:
“You will not use our copyrights or trademarks (including Facebook, the Facebook and F Logos, FB, Face, Poke, Book and Wall), or any confusingly similar marks, except as expressly permitted by our Brand Usage Guidelines or with our prior written permission.”
As pointed out by Wired and the other sources covering this, there really is no way to use Facebook without accepting these terms. Therefore, the articles posit, Facebook must be gaining control over the word book! Wired even quotes a University of Minnesota Law Professor stating that trademark rights are about use, not registration.
While this is all true, the actual way this functions is much more complex. True, trademark rights are built around use. Facebook controls some of this, by using the same logos and phrases they become associated with the product, and thus trademarks. However, obviously letting a company gain trademark rights simply through use is self-serving. The other piece is that a trademark gains strength through secondary meaning, or when the public at large begins to associate the mark with the company.
Thus, as some of the articles hint at, by making users agree that “book” is a trademark of Facebook, it does strengthen Facebook’s rights. Trademark disputes almost always contain evidence of “fame” which literally means how famous or well known a mark is. This can be demonstrated through sales, advertising, and often simply market research consumer surveys. Theoretically, Facebook could argue in the future, everyone who uses our site (in other words almost everyone who has internet access) agrees that book is our trademark.
The problem, however, is that it is unlikely that a term buried in the agreement will make much of an impression on consumers. You could probably ask 100 consumers what Facebook protects in their Rights and Responsibilities, and it is likely that none of them will be very accurate. Simply placing this language in the Terms is not going to get Facebook a trademark.
The real strength is slightly more sinister. When news outlets, including Wired and NBC, ZDnet, and Entertainment Weekly cover it, more and more people become aware of it. In fact, even non-Facebook users are probably aware of this, simply from reading the headline. Worse still, it could be possible for many readers to see the headline “Facebook making trademark claim on word ‘book’” (direct quote from Entertainment Weekly). Now, if we go back to that hypothetical survey of the general public, when asked what Facebook’s trademark terms are, users may say “Oh, book!” thinking back on these articles. Evidence which Facebook could then assert against others, and which may have some weight.
And that, my friends, is the true genius behind this move. Facebook knows that people watch its legal terms for evidence of privacy abuses or other sliminess, and also that the traditional arguments for a trademark of the term “book” are incredibly difficult. Instead, Facebook has taken advantage of this, and used it to their advantage.

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