District Court Permits Facebook’s Trademark Suit to Proceed Against Teachbook.com
By Albert Wang – Edited by Abby Lauer
Facebook, Inc. v. Teachbook.com LLC, No. 11-cv-3052 (N.D. Ill. September 26, 2011)
The District Court for the Northern District of Illinois denied defendant Teachbook’s motion to dismiss a trademark infringement suit brought by social networking site Facebook.
Judge Aspen, writing for the court, held that Facebook had pled sufficient facts to survive Teachbook’s Rule 12(b)(6) motion. The court declined to consider Teachbook’s extrinsic evidence and based its holding solely on the content of Facebook’s complaint and exhibits. The court also rejected Teachbook’s assertion that the word “book” was too generic to sustain a trademark claim, noting that Facebook’s trademark registration covers the compound word “Facebook” and that the specific use of “book” as a suffix was potentially protectable. In so holding, the court noted that consumer confusion could arise because Teachbook framed its service as an alternative for teachers barred by work policy from using Facebook.
The Trademark and Copyright Law Blog provides an overview of the case. John Del Vecchio contemplates the consequences of this holding for other sites with the word “book” in their name, while Eric Goldman criticizes the court’s findings on generic terms and on the likelihood of consumer confusion.
Defendant Teachbook.com LLC operates a social networking site for teachers. Facebook filed suit against Teachbook in the Northern District of California last August, alleging trademark infringement, trademark dilution, and related claims. Slip op. at 2. However, the suit was dismissed for lack of personal jurisdiction on May 3, 2011. Id. Facebook subsequently re-filed in the Northern District of Illinois, where Teachbook’s principal place of business is located. Id. at 1.
Teachbook attempted to introduce evidence under theories of judicial notice and centrality to Facebook’s complaint, including Facebook’s filings with the European trademark authority, USPTO records pertaining to Facebook’s trademark registrations, and printouts from Facebook itself. The court declined to consider any of Teachbook’s evidence, finding that its evidentiary value was subject to “reasonable dispute” and that Teachbook’s arguments were more properly directed to summary judgment. Id. at 4.
Relying on Le Book Pub., Inc. v. Black Book Photography, Inc., 418 F. Supp. 2d 305 (S.D.N.Y. 2005), Teachbook argued that Facebook could not assert trademark rights over the word “book,” as it was too generic. Slip op. at 7. The court rejected this argument, holding that Facebook’s claim pertained to the whole compound word, “Facebook.” In so holding, the court noted that neither the word “face” nor the word “book” merely designated Facebook’s product; rather, the two words together were distinctive enough to give rise to a protectable trademark claim. Id. at 10.
On the issue of consumer confusion, Teachbook argued that by setting itself up explicitly as an alternative to Facebook, it foreclosed any claim of consumer confusion. The court disagreed, noting that Teachbook could still free-ride on Facebook’s goodwill merely by attracting initial consumer interest via a similar brand name. Id. at 15 (citing Eli Lilly & Co. v. Natural Answers, Inc., 233 F.3d 456 (7th Cir. 2000)). The court was also concerned about the possibility that a consumer might mistake Teachbook for an official alternative product of Facebook’s. Slip op. at 15.
Finally, the court summarily rejected Teachbook’s motion to dismiss Facebook’s trademark dilution claims, stating that lack of consumer confusion is not a defense to a claim of dilution.
This decision opens Teachbook up to discovery and forces it to wait until summary judgment to try to escape Facebook’s suit. More broadly, although the court cabins the scope of Facebook’s rights to the use of the word “book” in a compound word, this holding could nevertheless call into question the legal status of other sites and entities that incorporate ”book” into their name. Entities considering using the word “book” may be deterred from doing so by the prospect of costly litigation, even if Facebook loses this case on the merits.
Albert Wang is a 3L at Harvard Law School.