Facebook, Inc. recently prevailed in its opposition of Think Computer Corp.’s attempt to register the mark FACEMAIL for email and instant messaging services. Facebook alleged likelihood of confusion and dilution of its FACEBOOK marks, registered for a broad range of offerings including instant messaging services.
Think Computer, representing itself pro se, asserted that Facebook is “well-known as a ‘trademark bully’” and that the FACEBOOK marks were weak.
The Trademark Trial and Appeal Board (“TTAB”) found that the FACEBOOK mark is famous. This was not surprising, given, among other things, overwhelming survey evidence introduced by Facebook showing that 74 percent of the public in a randomized telephone survey spontaneously identified Facebook when asked to name a social networking site, and 95 percent recognized FACEBOOK as a mark for a social networking site.
As a result, and because of the similarity of the parties’ services and respective marks (with “FACE” the dominant element in each), the TTAB agreed with Facebook that there was a likelihood of confusion and refused registration of the FACEMAIL mark.
The TTAB did not address Facebook’s dilution claim, as the opposition was resolved on the likelihood of confusion claim. Nevertheless, Facebook’s powerful evidence of fame, and the TTAB’s recognition of it, left a dilution finding well within reach, even if Think Computer’s services had been rather dissimilar.