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Shagbook won't take Facebook thrust lying down

Pokes back at 'trademark bully'

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The "hottest place to hook up with local singles for no strings attached adult dating" is fighting back against Facebook's demand that it change its name.

Shagbook – an outfit based in Windsor, UK – has filed an Answer to Opposition with the United States Patent and Trademark office in response to Facebook's assertion that its use of the name "Shagbook" was a violation of the mega-social-networking site's trademark.

Although Shagbook's filing "admits that one definition of 'Shag' is 'to have sexual intercourse with'," they argue that there's nothing wrong with appending that mildly naughty term to the word "book".

The term "facebook", the filing asserts, is generic, and use of it predated Zuckerberg's usurpation of it for his social networking site.

"Because the term 'facebook' was used by many parties descriptively and generically well before [Facebook]'s date of first use of the term," the filing argues, "the term is generic and incapable of trademark protection under the laws of the United States."

The Reg will jump in here for a moment to mention that the American Heritage Dictionary's Dictionary.com notes in its Word Origin & History section for the word in question: "facebook: directory listing names and headshots, by 1983, originally U.S. college students, from face (n.) + book. The social networking Web site dates from 2004."

Shagbook's filing also asserts that Facebook is being heavy-handed. "[Facebook]'s opposition should be denied under the equitable doctrine of unclean hands," they argue, saying that the social networkers have "engaged in trademark misuse and trademark bullying by abusively using oppositions, litigation, and threats of the same to maintain a competitive market advantage."

In addition, Shagbook argues that it's unreasonable to confuse their website with Facebook, and bolster that argument by using the social networking site's own marketing against it.
"[Facebook] has at times made public statements that its website at facebook.com is not a dating site and in fact has removed individuals from the site upon discovering that said individuals had been using the site as a 'dating site' to meet new people for sexual encounters," they write.

"Thus, [Facebook] should be estopped from arguing that it provides services that are the same as or related to the services provided by [Shagbook]."

Gotcha there, Mr. Zuckerberg.

Teachbook, Placebook, Lamebook, and Faceporn

Facebook's complaint against Shagbook isn't the first time they've defended their trademark. Last August, they sued an "online community for teachers" named Teachbook for trademark infringement, but that suit that was thrown out on a jurisdictional technicality this May.

Facebook also sued the self-described "hottest free social porn community on the entire planet", Faceporn (definitely NSFW), last October, claiming that not only was the porn site misusing the sacred term, but also that it copied some look-and-feel of the social networking site. Faceporn went offline for a bit, then returned with the same name but a decidedly non-Facebookian appearance.

Facebook also threatened Placebook with infringement claims, which that company's founder Michael Rubin – tongue firmly in cheek – suggested could be overcome simply by renaming his site "PlacéBook" (click here for a pronunciation lesson).

Then there's the parody site Lamebook, which, like Placebook PlacéBook, "borrows" some of Facebook's look and feel. Lamebook's legal strategy was novel: they sued Facebook first; Facebook, of course, sued back.

Shagbook is of the opinion that "[Facebook] is well-known as a 'trademark bully.' With billions of dollars in outside investment, [Facebook] appears to consider the court system, the United States Patent and Trademark Office and the TTAB within it to be nothing more than tools it can use to fend off potential competitive threats before they actually materialize."

Perhaps Zuckerberg & Co. might want to keep in mind what happened when another mega-corp tried to trademark an arguably generic term: a federal judge recently turned back Apple's request for a preliminary injunction to stop Amazon from using the term "app store".

According to US District Court Judge Phyllis Hamilton, app store is more "descriptive than it is distinctive." It's entirely possible – especially if he or she were one of the many thousands of college students and others who used hard-copy facebooks before there was an online version – that another judge may come to the same conclusion about Facebook. ®

Bootnote

One tasty aspect of Shagbook's USPTO filing is a concise retelling of Facebook's early days. Start at page eight.

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