June 04, 2015

FACEBOOK VS. DESIGNBOOK: The Vermont Trademark Wars, Part III (Take our survey too, please)

by Guest Blogger

FACEBOOK continues its rampage against books, and Vermont gears up for another trademark battle. For those of you who may not know, books were common in the last few millenia as written or printed works consisting of pages glued or sewn together along one side and bound in covers (kind of like a bunch of Kindles stacked together). Fac*book is filling the void from the loss of this word in everyday life by preventing the world from re-purposing "book" through its aggressive trademark trolling program. Over the years, Fa**book has cut the number of overlapping letters it requires before it will challenge use by another company. A short primer on F***book itself is below:

[embed]http://www.hulu.com/watch/2524... few weeks ago, ****book challenged 4 of Designbook's 15 applications for the service mark DESIGNBOOK. DESIGNBOOK is a startup crowdfunding service in Vermont. Vermont is up by Canada, and is where my Dad lives (seriously). Neither are affiliated with ****book.

In ****book's opposition, it claims that "The DESIGNBOOK Marks are similar in commercial impression to the ****BOOK Marks." (Asterisks added). The opposition also claims that "Applicant has applied for and uses the DESIGNBOOK Marks in connection with 6 services that are the same, related, or complementary to the goods and services offered under the ****BOOK Marks" and "Applicant's Marks suggest an affiliation or connection between Applicant and Facebook where none exists." FACEBOOK v. DESIGNBOOK.

On Monday, Vermont's governor (Peter Shumlin) got involved in the dispute by sending Mark Zuckerberg an open letter asking him to "step in to take action to right this wrong." Of course, Vermont has a few famous trademark battles under its belt: VERMONSTER and EAT MORE KALE. Even with the great State of Vermont acting as a proxy, this is still a $200B ****book vs. a $27B Vermont (based on GDP). My dad, like most Vermonters, always enjoys being David in a Goliath faceoff.

Two paragraphs of boring stuff (or just skip to the bottom):

The basic rule for whether a trademark should be allowed to register is whether it would create a likelihood of confusion with an existing registration. Notably, the U.S. Patent and Trademark Office did not think so. How can you tell if there would be a likelihood of confusion?

The basic principle in determining confusion between marks is that marks must be compared in their entireties and must be considered in connection with the particular goods or services for which they are used (citations omitted). It follows from that principle that likelihood of confusion cannot be predicated on dissection of a mark, that is, on only part of a mark (footnote omitted). On the other hand, in articulating reasons for reaching a conclusion on the issue of confusion, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties (footnote omitted). Indeed, this type of analysis appears to be unavoidable. In re National Data Corp.

The factors considered when determining a likelihood of confusion are:

The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.

The relatedness of the goods or services as described in an application or registration or in connection with which a prior mark is in use.

The similarity or dissimilarity of established, likely-to-continue trade channels.

The conditions under which and buyers to whom sales are made, i.e. "impulse" vs. careful, sophisticated purchasing.

The number and nature of similar marks in use on similar goods.

A valid consent agreement between the applicant and the owner of the previously registered mark.

We'd like your help in determining whether there is a likelihood of confusion between ****BOOK and DESIGNBOOK. Please take our completely unscientific 5 question Survey and let us know what you think. We'll post the results later. Or you can find it at: https://www.surveymonkey.com/s/3PWB6CW