Teachbook Loses Skirmish With Facebook Over Name

Gavel-AB

Facebook has won a round in court in its trademark battle with the start-up Teachbook, a social network aimed solely at teachers.

U.S. District Court Judge Marvin Aspen in the Northern District of Illinois this week rejected Teachbook's bid to dismiss the lawsuit at a preliminary stage. Aspen ruled that the two companies' names were similar enough that Facebook could pursue its trademark infringement argument.

Teachbook had argued that the only similarity was the word "book," which it said was too generic to be trademarked. But Aspen ruled that Facebook's name should be viewed in its entirety rather than broken down into two common words -- "face" and "book."

"Upon initial reading, nothing about the two component parts of the 'Facebook' mark makes one more salient than the other," he ruled. "Rather, it is the aggregate effect of the conjoined parts that gives the mark its distinctiveness."

He added: "Given the ubiquity Facebook claims its mark has achieved, one could reasonably infer that the choice of the 'Teachbook' mark -- which, like the 'Facebook' mark, is a curt, two-syllable conjunction of otherwise unremarkable words -- to offer a similar service in the same medium was no accident."

The dispute between the companies dates to August of 2010, when Facebook sought a court order banning Teachbook from continuing to use that name. Teachbook argued that its focus was on helping teachers professionally, and that it didn't compete with Facebook. But Facebook contended that Teachbook could potentially siphon users because it marketed itself as an alternative to Facebook.

Aspen ruled that Facebook's allegations of infringement warrant further proceedings, but Teachbook could still prevail after a trial, after more facts have come out. In other cases, judges have hesitated to trademark cases at a preliminary stage, before both sides have presented evidence about issues like whether consumers actually are confused, according to Internet law expert Venkat Balasubramani. "At the motion-to-dismiss stage, the court doesn't usually dig into the facts around what consumers may perceive," he says. He adds that it's too soon to predict which company will ultimately prevail.

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