Facebook Scores Victory and Blocks FaceMail Trademark

By Joseph Mandour on July 30, 2013

California Trademark LawLos Angeles – The Trademark Trial and Appeal board on Tuesday sided with Facebook in ruling that consumers would be confused by use of the FaceMail trademark by Think Computer Corp.

Think Computer first filed its trademark application for “FaceMail” on an intent to use basis in June 2010.  Once it published for opposition in late 2010, Facebook filed a notice of opposition, claiming the trademark would lead to a likelihood of confusion among consumers and would dilute Facebook’s brand.

Think Computer intended to develop FaceMail as a facial recognition email system, as part of a suite of facial recognition programs developed by the tech corporation.  Facebook claimed that its trademark is so established in the computer related field that customers would believe any program that uses the word “face” to be connected to Facebook.

In building defense for its case, Facebook commissioned two studies to be conducted by the marketing and research firm, Ford, Bubala & Associates.  In its random telephone sample, the firm demonstrated that 74% of respondents named Facebook when prompted to name one social networking site.  The survey showed that 95% of respondents recognized Facebook when suggested to them.

This survey demonstrated the unquestionable fame of the Facebook trademark, which was one critical test for the trademark judges ruling in the case.

A second survey conducted by the same firm demonstrated Facebook’s claim of likelihood of confusion amongst consumers, as 32% of respondents believed FaceMail to be associated with or sponsored by Facebook.

Facebook’s introduction of its own email system was crucial in the decision for this case.  In numerous newspaper articles cited by the court, journalists referred to Facebook’s new email system as “Facemail”.  This justifies Facebook’s claim of likelihood of confusion, according to the judgment.

This is not the first time that Facebook CEO Mark Zuckerberg has faced off against Aaron Greenspan, the head of Think Computer.  The two were classmates at Harvard, and Greenspan argues his program houseSYSTEM made innovations that Zuckerberg utilized in his design of the Facebook platform.

Greenspan has previously sued the publishing company of The Accidental Billionaires, the book written about Mark Zuckerberg’s rise to fame, for “defamation by omission.”  He claims Zuckerberg’s capitalization on his innovations with houseSYSTEM should have been included in the book.

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