Taking it at Face Value

Facebook is on a mission. Not content with its global domination of computer screens everywhere, the social networking heavyweight has a new goal in its sights: acquisition and control of the English word "FACE".

Facebook lodged a trade mark application with the US Trade Marks Office in 2005 to protect the word "face" and interestingly no one filed any objections. Facebook has also filed multiple US applications for "Poke" and "Like" and have already registered "wall".

Does this mean that I can't use the word "FACE"?

Do not panic (yet), you will not be pursued by the Facebook trade marks crack squad for using "face" in marketing your new moisturiser or "wall" in advertising your construction services. The trade mark does not provide a blanket monopoly in relation to the word "face", protection only extends so far as the class specifications registered. So if you want to create a social media platform , then 'liking' someone's 'wall' and 'poking' them to let them know this is by all means out!

The Challengers

As Faceporn discovered recently, Facebook is not a fan of piggybacking. Facebook is suing the operators of Faceporn who billed their site as "the number one socialising porn and sex network". Faceporn used of many of Facebook's distinguishing features included a similar logo, colour scheme and wall component.

Facebook also recently filed a suit against "Teachbook"; an online community who attempted to trade mark the term and refer to themselves as "face book for teachers".

At first glace, Facebook's attempts to gain a monopoly on a small portion of the English language may seem extreme. However, the threats to the brand are real. It is not unreasonable for a social networking site, whose users include children, to fight any association with the porn industry, or any association with any other product or service for the matter.

Why all the fuss?

Is all this really necessary? Facebook argue that it is. Allowing other social networking entities to use the "book" suffix would make that word generic in the area of digital media and threatens  the distinctive quality of the mark in digital media circles.

"Generic" is a verboten term in trade mark law. A generic trade mark is defined as "a trade mark or band name that has become the colloquial or generic description for or synoymous with a general class of product or service, rather than as an indicator or source or affiliation as intended by the trademark's holder".

By using a generic trade mark to refer to the general form of what that trade mark represents i.e. a 'Kleenex' instead of a tissue' or a 'Hover' instead of a 'vacuum cleaner' the brand owner loses its ability to control use of its branding, its distinctiveness eroded by association with unrelated products.

Lessons learned Protecting Brand Value

Brand value and recognition is one of a company's most valued assets. Businesses should investigate and monitor what, if any protection is available to ensure maximum brand exposure and minimum risk.

Many generic terms such as Xerox, Zipper and Escalator were once registered and protected trade mark terms for specific products. In cases such as these, a trade mark can be blurred and competing companies use it to marker unrelated products. Eg. a company that may specialise in marketing bicycles - the company's brand and markings are well known, so when consumers see a breakfast cereal with similar markings, they may associate the breakfast cereal with the bicycle company. This dilutes the bicycle company's mark by broadening it's associations.

Lessons learned

There are two lessons to be learned here: Do no mess with Facebook and brand protection is definitely worth the fight. To prevent trade mark 'generocide' make sure that you

  • use search engines like Google to monitor and investigate usage of your trade marks.
  • pre-empt improper use of your trade mark by implementing trade mark use guidelines from the birth of your brands.

Kelly Tomasich