Shagbook: Facebook is a generic term, should not be trademarked

Shagbook: Facebook is a generic term, should not be trademarked

Summary: Shagbook is accusing Facebook of trademark bullying, says the term facebook is generic, and is even arguing that Facebook's trademark should never have been granted.

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Facebook is known for going after any company that uses the word "book" in its name, having already filed suit against TeachBook.com, FacebookOfSex.com, and most recently UK adult dating website Shagbook.com. The last one is fighting back; Shagbook has filed its own opposition, along with counterclaims, with the United States Patent and Trademark Office.

Shagbook allows consenting users to carry out location-based searches in order "to hook up with local singles for no strings attached adult dating" in Australia, Canada, Ireland, New Zealand, South Africa, the UK, and the US. In May 2011, Facebook filed suit against Shagbook, saying it would be "damaged by the issuance of a registration for the mark Shagbook."

As represented by SNRG Ventures, Shagbook has in turn accused Facebook of trademark bullying and says it has been "abusively using oppositions, litigation, and threats of the same to maintain a competitive market advantage," according to a US Patent Office Filing (PDF, via Paid Content). In the filing, Shagbook also "denies the allegation that Facebook is highly distinctive as it is a generic term."

The filing goes into the history of the term "facebook" and argues that it has been used for decades to describe publications created by students, faculty, or staff at colleges, universities, and even fraternities. Typical facebooks contain at least pictures and limited biographical data. Shagbook not only argues that facebook is a generic term, but it challenges the validity of Facebook's trademark, arguing that it should never have been granted.

It's worth noting that if you search for "facebook" on Wikipedia, you are automatically redirected to wikipedia.org/wiki/Facebook. At the top of the page, there's a short message: "This article is about the website. For the collection of photographs of people after which it is named, see Facebook (directory)." If you click on that link, you'll be redirected to wikipedia.org/wiki/Facebook_(directory), which describes the term as so:

A facebook is a printed or online directory found at American universities consisting of individuals' photographs and names. In particular, it denotes publications of this type distributed by university administrations at the start of the academic year with the intention of helping students get to know each other.

Facebook insists Shagbook is in violation of Facebook's trademark because the site's name is highly similar in "appearance, sound meaning, and commercial impression" and that the name was adopted with "the intent to call to mind and create a likelihood of confusion … and/or trade off the fame of Facebook."

Shagbook's founder, whose name is unknown, points out that his website was created in 2006, long before Facebook became popular. He is an American has spent many years living in the UK and has been using the term "shagbook" prior to the launch of Facebook or Shagbook. Last but not least, Shagbook is specifically for dating, while Facebook is a general-purpose social networking site, so Shagbook argues it's unlikely that consumers will be confused.

In short, Shagbook hopes Facebook's history of tough trademark enforcement could result in Facebook's trademark being revoked.

Facebook's original filing against Shagbook, and Shagbook's counter filing are included in full below:

Topic: Social Enterprise

Emil Protalinski

About Emil Protalinski

Emil is a freelance journalist writing for CNET and ZDNet. Over the years,
he has covered the tech industry for multiple publications, including Ars
Technica, Neowin, and TechSpot.

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  • RE: Shagbook: Facebook is a generic term, should not be trademarked

    Facebook should not be able to go after anyone that wants to put the word "book" into a name. I think the combining of Face and Book into one word is fine to be trademarked but the words individually even when combined with something else should not be trademarked by FaceBook.

    To me it is just like Apple thinking they were the ones that innovated putting a lower case "i" in front of a word. They have sued people for just that and even when some other company has done that they feel they can just use it without permission.
    bobiroc
    • RE: Shagbook: Facebook is a generic term, should not be trademarked

      @bobiroc

      My thoughts exactly.
      josh92
    • It depends on the circumstance

      @bobiroc
      You can sue over similar names (Redbook.com, Readbook.com), especially if the opposing site is very similar to the original.

      I don't think in this case its even close to Facebook.

      You'd have to be one lousey speller to get confused and go to the wrong site! :)
      William Farrell
      • RE: Shagbook: Facebook is a generic term, should not be trademarked

        @William Farrell

        Yeah I am sure there are some exceptions depending on the case. Just like if someone made a site called Facesbook or Facedbook. It is very tricky but ShagBook and Teachbook were not even close other than having book in their name.

        Now the FacebookOfSex.com should be questioned.
        bobiroc
  • "Generic" depends ...

    Whether something is "generic" depends on the specific content. The reason you always hear "Kellogg's" Corn Flakes and "Post" Raisin Bran is that the terms "corn flakes" and "raisin bran" are in fact completely generic descriptions, like "wood pulp" or "ceramic tile" and USPTO wouldn't let them be registered.

    Regarding "facebook", although the term may in fact have existed previously, reality is that the vast majority of English speakers (and basically all non-English speakers) had never seen or heard the term. Reality is that despite how it might have been used occasionally, nowadays people associate the term with a specific company that offers specific services--exactly what trademark and tradename laws are intended to protect.
    Rick_R
  • RE: Shagbook: Facebook is a generic term, should not be trademarked

    Perhaps similarly, Toys R Us seems to think they own the "R".
    dv5678