Facebook Battles Companies Over Names

FACWell-known companies including Facebook Inc. are increasingly bringing trademark-infringement claims in their efforts to block startups and others from using similar names, some trademark lawyers and law professors say.

Engineers Kyle Clark, 35 years old, and Aaron Pollak, 30, decided over a beer at a Burlington, Vt., restaurant last year to name their new venture Designbook, after the brown notebooks engineering students use to document projects.

?The notion of a design book is something we are trying to embody in the digital space,? said Mr. Pollak, whose six-person startup helps enable entrepreneurs to find collaborators for nascent ventures. Designbook also plans to help startups raise money online from wealthy individual investors through a process known as?equity crowdfunding.?

But Designbook ran into an unexpected snag last month when social-networking giant Facebook Inc. filed an objection to its name with the U.S. Patent and Trademark Office. Facebook said that Designbook would infringe on the company?s trademark, confuse consumers and dilute its brand.

A spokeswoman for Facebook added that, as the owner of multiple famous trademarks, Facebook takes seriously its responsibility to reasonably protect its trademarks and prevent consumer confusion.

She noted that Designbook?s publicly available trademark application sought protection for a social-network service, coupled with the word ?book? in its name. That would create a combination that Facebook believes could easily confuse consumers, she said.

According to a search of U.S. Patent and Trademark Office records, Facebook has been involved in more than 100 opposition proceedings. The Facebook spokeswoman said these figures include both active and inactive matters and various types of trademark proceedings, including ones where the company opposed a trademark, asked for an extension to negotiate a dispute with another party, or appealed a decision involving its own trademark registration efforts.

She added that Facebook has filed fewer than 100 notices of opposition in trademark matters in the U.S. in the last five years.

Another dispute over the use of the word ?book? as a suffix involved Teachbook, an education technology startup. It changed its name to TeachQuest in 2012, after a federal judge in Illinois denied its motion to dismiss a trademark suit brought by Facebook. ?We took one big swing against them,? said Mike Rodenbaugh, a San Francisco-based attorney who represented Teachbook, adding that his client couldn?t afford a longer legal battle.

Trademark law was intended to help firms protect their marks in a narrow geographic area, said Wendy Seltzer, founder of ChillingEffects.org, a website that tracks legal disputes involving online expression. But with the Internet?s rise, she added, ?there are more potential collisions and it?s harder to find things that are globally distinctive.?