On the same day that Facebook started rolling out its new Timeline profile, the company also filed a counter lawsuit against Timelines.com, which is trying to stop the social networking giant from using the Timeline name. Facebook's filing asks the court to declare that the company is not infringing on Timelines.com's trademark and to cancel it because it is generic, according to PaidContent.
Trademark law has five categories; the weakest ones are referred to as generic and descriptive terms. Courts have the power to cancel weak trademarks.
In its filing, Facebook provides examples to show that "timeline" is simply a descriptive, commonly-used word. It lists ten other websites that uses the word, and notes the USPTO referred to such sites last month when it refused to expand the scope of Timelines.com's trademark.
Facebook is risking a lot in choosing to fight rather than to settle. If Facebook launches the Timeline profile in the US without clearing up this trademark issue, Timelines.com could seek a preliminary injunction forcing it to take down the name, which could prove very expensive for Facebook. The social networking giant's strategy may be to use its team of at least nine lawyers to drag out the lawsuit in the hope that expensive legal bills will force Timelines.com to give up.
Timelines.com has a trademark for the "timeline" name, filed in May 2008 and granted in January 2009. Trademark law states brands can prevent others from using their name if there is a possibility that consumers will be confused, as long as the names are in the same field or industry.
Timelines.com also argues Facebook either knew or should have known that the United States Patent and Trademark Office (USPTO) had granted the trademark, and notes Facebook did not contact it for permission to use or license the name. Facebook continues to insist that the word "timeline" is generic.
The trademark is for "providing a web site that gives users the ability to create customized web pages featuring user-defined information about historical, current and upcoming events." The company says it has "spent years building this brand and using it in the above stated way on our site Timelines.com."