Face-Off Imminent between Facebook and Apple?

December 5, 2010

News

[Above feature image by Mark Mauno under Creative Commons licence: https://flic.kr/p/jnZzHS]

Last week, I blogged about Facebook’s pending trademark registration for the word FACE with the U.S. Patent and Trademark Office (“USPTO”). An interesting question that has been floating around is whether Facebook’s trademark registration will pose problems for FaceTime, which is the name for Apple’s iPhone 4 video calling software/app. In particular, a few have pointed out that the services listed in Facebook’s FACE trademark application is similar to what FaceTime does:

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”
[emphasis mine]

Given this, is there possibly an upcoming assault by Facebook on Apple’s FaceTime name? Perhaps. Interestingly, Apple filed their trademark application for FACETIME with the USPTO back in June of this year. The goods and services currently listed on the FACETIME application include the following:

“Computers; computer software; handheld mobile digital electronic devices used as a telephone, handheld computer, audio and video player, camera, video camera, personal digital assistant, electronic organizer, and electronic notepad, and used to access the Internet, electronic mail, and other digital data; cameras; headphones; stereo speakers; audio speakers; video cameras; accessories, parts, fittings, and testing apparatus for all of the aforesaid goods”

“Communication and telecommunication services

“Application service provider (ASP) services featuring computer software; computer programming; information relating to computer hardware or software provided on-line from a global computer network or the Internet; information, advisory and consultancy services relating to all the aforesaid”
[emphasis mine]

The above shows that both trademark applications list “telecommunication services” among their list of goods and services. So, could an argument be made that there is likely to be confusion in the marketplace between the two trademarks? At least in the first instance, the USPTO does not think so. Just this September, Apple was issued an Office Action letter by the USPTO’s trademark examining attorney assigned to the FACETIME application, which cited several formalities that need to be addressed before the application can proceed to the next stage. However, the examining attorney also stated that she did not find any conflicting marks that would bar registration, in spite of the existence Facebook’s FACE trademark application (including numerous other active trademarks containing the term FACE). Since I am not an expert in U.S. trademark law, I will not comment on the merits of a confusion analysis between the two trademarks, but I do think that it appears to be in the realm of possibility that Facebook could oppose Apple’s FACETIME trademark application once the USPTO publishes the trademark for opposition. Given that Facebook has been already aggressively policing the “book” part of its FACEBOOK family of trademarks, including suits launched against Teachbook and parody site Lamebook, it may not be a surprise to see Facebook going after Apple. In fact, just this past October, Facebook filed a lawsuit against Faceporn.com, a pornographic social networking site, claiming trademark infringement.

However, any dispute between Facebook and Apple, opposition at the USPTO or otherwise, over the FACETIME trademark would see Facebook facing (pun sort of intended) a very powerful and financially well-backed company in Apple, unlike its recent opponents mentioned above. Whether this consideration will give Facebook pause, remains to be seen.