Saving Face – What Facebook’s trademark FACE really means to you

December 2, 2010

News

(Feature image source: http://www.digitaltrends.com/wp-content/uploads/2010/11/facebook-face-tm-book-tm-trademark.jpg)

Last week, Facebook was granted a “Notice of Allowance” by the U.S. Patent and Trademark Office (“USPTO”) for the registration of FACE as a trademark. There has since been much buzz surrounding this development, including exacerbated outrage on how Facebook could “own” the word FACE, how everyone will have to pay Facebook every time they say “face”, and how Mark Zukerberg will eat your first born if you infringe on his FACE trademark. Okay, I made up the last one, but you get the point. In short, the death of the word “face” has been largely exaggerated.

While I will not pretend that I am an expert in U.S. trademark law, the general principles of Canadian trademark law apply to this situation. If I am in error anywhere here, then I defer to any American counsel reading this post to correct and/or add to my analysis. I will address three main concerns below over the pending registration of Facebook’s FACE trademark:

1) What does the registration of FACE actually give Facebook?

Facebook will only have the exclusive right to use the trademark FACE in conjunction with the services listed in its application. This is confined to “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”. By “use the trademark”, I don’t mean that Facebook will be the only ones who can “say” FACE. Rather, I mean that they will be the only ones that can “use in commerce” FACE as a trademark in conjunction with the services as listed in their trademark application. Among other things, the registration of FACE will grant Facebook certain protections under U.S. trademark law, including protection against trademark infringement.

Furthermore, Facebook’s pending registration of the FACE trademark will not even mean that no one else can register a trademark containing FACE. A search of the USPTO’s trademark database reveals that there are over 1,500 live trademarks containing the term FACE, with almost all of them not belonging to Facebook. Therefore, in no uncertain terms does Facebook have an all-encompassing exclusive jurisdiction over FACE as a trademark.

2) Does this mean that Facebook can sue anyone who says “face”?

No, not quite. As stated above, Facebook will not be the only ones who can say or write “face”. They will not own “face”, and Merriam-Webster will not be forced to put a TM beside the entry for “face” in the dictionary. Furthermore, third parties can generally use the term FACE, so long as they are not using the term in commerce in association with the same or similar services as those in Facebook’s trademark application. A caveat, however: whether you or some third party can use FACE as a trademark or as part of a trademark without infringing on Facebook’s rights is very fact-dependant, and a legal opinion should be sought before using FACE as a trademark.

Perhaps much of the confusion out there centres on a misunderstanding between copyright and trademarks, which are distinctly separate concepts of intellectual property law. I won’t get into the details of this distinction here, as it deserves its own post altogether, but rest assured that you will not have to cut a cheque to Facebook every time you say the word “face”.

(Note: For clarification, Facebook’s FACE trademark has not yet been registered. Trademark law is grounded in “use in commerce”, and Facebook filed their application on an “intent to use” basis. Since they have not actually used FACE as a trademark yet (they must use FACE in that exact standalone form for the sake of registration, not just as part of their FACEBOOK trademark), Facebook must submit evidence of said use to the USPTO before their registration will be completed. Therefore, as you may have notice, I have referred to Facebook’s pending registration in the future tense above.)

Special thanks to Amy Croll for her input on this post.

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