PAPER in a Digital Age

by Winthrop & Weinstine, P.A.
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On the cusp of its 10 year anniversary, Facebook announced the “Facebook Paper” app – a combination of social networking and content feed that seems strikingly similar to one of my favorite apps Flipboard, with some of the Facebook features included in the app.  While there may be a patent dispute on the horizon there, first up is a trademark dispute ignited on the day of the announcement. 

If you follow tech-related blogs, you have probably heard that after the announcement of the app, Paper by FiftyThree, another highly popular smartphone and tablet application that allows you to write and draw with a stylus, was a little jilted by Facebook’s use of PAPER.

As we have seen more and more lately (like here and here), the “little guy” FiftyThree took to their blog as a platform for their dispute to fight against the Goliath.  The post indicates some evidence of confusion by consumers and the press, thinking that Paper by FiftyThree had been bought by Facebook.  The post also mentions some fairly strong ties already between FiftyThree and Facebook and that Paper by FiftyThree supports sharing to Paper.   And, the post uses the dirty “bully” word to describe what Facebook might become with these tactics.

In an effort to protect its rights in the wake of Facebook’s announcement, FiftyThree smartly filed a use-based trademark application for PAPER for “computer application software and services for smart phones and tablets, namely, software for use in writing on smart phones and tablets with either a stylus or finger; computer application software and services for creating, editing, and compiling content to share with others via a social network; computer graphics software; computer hardware and computer software programs and services for the integration of text, audio, graphics, still images, and moving pictures into an interactive delivery for multimedia applications.”    They already have a registration for PAPER BY FIFTYTHREE for “computer application software for smart phones and tablets, namely, software for use in writing on smart phones and tablets with either a stylus or finger.”

Surprisingly, I could not find a pending trademark application for FACEBOOK PAPER or PAPER applied for by Facebook as of today.  Given the strong ties between the companies, it would likely be hard for Facebook to claim they were unaware of FiftyThree’s use of PAPER.  There are, however, over 150 pending applications and active registrations incorporating PAPER for goods and services relating to computer software and/or social  networking, which lends credence to an argument that the term is diluted in the relevant industry.  And by all accounts, it does not look like Facebook will be caving anytime soon to FiftyThree’s demands to change their name.

The dispute here is somewhat analagous to the SATURDAY dispute between SATURDAYS NYC and KATE SPADE SATURDAY, where a court ultimately determined that despite actual confusion by consumers, Kate Spade did not infringe Saturdays NYC’s trademark because SATURDAY was relatively weak in the apparel industry, the distance between the products, and the inclusion of the famous mark Kate Spade.

One takeaway from this latest public trademark spat is yet another reminder to encourage communication between your legal team and your marketing team, especially prior to launching a new product.  This dispute has overshadowed Facebook’s advancements in their technology and their services.  You have the chance to drive the narrative when you have a thoughtful legal, marketing, and PR strategy.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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