Facebook, Timelines.com to settle, or continue battle in 2013

Timelines.com is suing Facebook over its timeline trademark, and Facebook is countersuing because it argues "timeline" is generic. The two will either settle or continue their legal battle next year.
Written by Emil Protalinski, Contributor

Timelines.com is locked in a legal battle with Facebook, in an effort trying to stop the social networking giant from using the Timeline name. In federal court today (document embedded above), the two parties agreed on a schedule for the legal proceedings, including a trial that would take place next year:

Fact discovery completed by August 31, 2012 Plaintiff’s expert reports due by September 28, 2012 Defendant’s expert reports due by October 26, 2012 Rebuttal expert reports due by November 23, 2012 Expert discovery completed by December 28, 2012. Dispositive motions to be filed by January 31, 2013 Final pretrial order to be filed by [open for Court].

The companies also hinted they may resolve the dispute before then, as pointed out by paidContent:

The parties have discussed settlement of this matter and submit that an early settlement conference with a magistrate judge may facilitate settlement of this matter.

Four months ago, Timelines.com filed a lawsuit against Facebook claiming the company's new Timeline feature may "eliminate" the Chicago-based company. Three months ago, the small website provided more details about its lawsuit by posting a public cry for help over at timelines.com/trademark.

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. Trademark law has five categories: arbitrary, fanciful, and suggestive trademarks are the easiest to protect, descriptive marks offer protection under certain circumstances, and generic marks never offer protection. Courts have the power to cancel the last two.

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. 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."

In the original complaint, Timelines.com pointed out that Facebook was redirecting users from the Timelines.com Facebook Page at facebook.com/timelines to Facebook's own Timeline webpage at facebook.com/about/timeline. The social networking giant has since stopped doing this.

Last month, on the same day that Facebook started rolling out its new Timeline profile, the company also filed a counter lawsuit against Timelines.com. Facebook's filing asked the court to declare that the company is not infringing on Timelines.com's trademark and to cancel it because it is generic.

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 two months ago when it refused to expand the scope of Timelines.com's trademark.

Facebook is going to push hard to settle, because if it doesn't, and loses, Timelines.com could seek a preliminary injunction forcing it to take down the name, which could prove very expensive for Facebook. Then again, by 2013 we may have a completely different profile on Facebook anyway.

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