Facebook Close to Completing Trademark Registration of the Generic Term “Face”

How to trademark the name “face”:  In a story first reported by TechCrunch, the United States Patent and Trademark Office (USPTO) has sent Facebook a Notice of Allowance for registration of the word “Face”. Facebook filed registration for the mark within the category of “telecommunication services, namely, providing online chat rooms and electronic bulletin boards for transmission of messages among computer users in the field of general interest and concerning social and entertainment subject matter, none primarily featuring or relating to motoring or to cars.”

Apparently, there are only a few remaining barriers Facebook has left to perform before its registration of the “Face” trademark is complete.
1) Facebook has to pay the issue fee (no foreseeable problems here),
2) Facebook must file a sworn Statement of Use that it intends to use the trademark in conjunction with products or services in commerce, and
3) Facebook must demonstrate its actual use of the mark in commerce.

Facebook continues tread a difficult path as it attempts to register a trademark in the word “Face”, with the USPTO. Persons familiar with trademark law know that there is a distinctiveness spectrum for determining the validity of a trademark. At the top of this (most distinctive) are arbitrary or fanciful marks. Below that on the spectrum are suggestive marks. Below suggestive marks are descriptive marks. And clinging to the bottom rung of the distinctiveness spectrum are generic marks.

Arbitrary, fanciful, and suggestive marks typically qualify for protection. Descriptive marks are more easily contested, these can sometimes qualify for protection but can be ruled invalid by a competitor in commerce also using the mark. Generic marks are an entirely differently matter. If a mark is generic, it typically won’t be entitled to trademark protection under the Lanham act unless the mark owner can demonstrate that the mark has acquired some secondary distinctiveness in its use on a good or service that takes it out of the generic category.

The Lanham Act supplies the statutory authority for trademark enforcement and also places a higher value on a trademark based on how distinctive the mark is;

The USPTO grants federally registered trademarks that are enforceable under the Lanham Act. Under the Lanham Act, for a trademark to be enforceable, the owner must first use or intend to use the mark to identify and distinguish its goods or services from those manufactured or sold by others and also must indicate the source its goods or services. Although the word “face” seems to have been taken out of the ‘generic’ category, it remains to be seen how Facebook will be able to enforce its rights in the mark after successful registration.

“Face” isn’t the only word that’s being policed by Facebook. Indeed, CNNMoney reported, two recent instances of Facebook bringing legal leverage against internet websites using the other half of its name.

The first of the two instance happened in August, when Facebook vigorously defended its claim to the word “book” by bringing suit against Teachbook. Teachbook defended by noting that it operates merely as a teacher’s community (which, combined with the URL the site uses, is highly reminiscent of Facebook’s “college undergrad/graduate student” community start-up).

The second instance of Facebook policing the word “book” also occurred this past summer, when the social networking site forced the travel site PlaceBook to change its name to TripTrace.

Opposition to Registration of the “Face” trademark? Unlikely;

Aaron Greenspan, a former Harvard classmate of Facebook’s chief executive Mark Zuckerberg, received a time extension to file an opposition to Facebook’s attempt to trademark “Face”. Greenspan’s interest in the outcome of the “Face” registration stems from his role as the president and CEO of Think Computer, the developer of a mobile payments app called FaceCash. FaceCash would be in obvious conflict with Facebook’s trademark rights if it is able to finalize registration of the “Face” mark. However, apparently this dispute has already been settled out of court (as reported by CNNMoney).