Facebook filed an opposition on Wednesday before the Trademark Trial and Appeal Board for Keepface Global’s application for the KEEPFACE mark, claiming that Facebook would be harmed by the registration of this mark because of the likelihood of confusion and dilution of its marks.
Facebook claimed that it has used the FACEBOOK mark in connection with its business since at least February 2004, in “[c]reating an on-line community for registered users to participate in discussion, get feedback from their peers, form virtual communities, and engage in social networking” as well as the “marketing, advertising and promotion services.” Facebook referenced 13 of its relevant trademarks in the opposition. The company asserted that the FACEBOOK marks “are highly distinctive with regard to social media, electronic publications, and online networking goods and services.” Additionally, there is a “high degree of consumer recognition of the FACEBOOK Marks.”
Facebook based its opposition on the likelihood of confusion and dilution of a famous mark. In March, Keepface Global, a platform for brands to connect with influencers, filed its application in International Class 35: “Marketing and branding services, namely, providing customized communication programs to obtain consumer insights and develop branding strategies…” However, Facebook stated that “Applicant’s services in International Class 35 are similar or highly related to Facebook’s goods and services.” Facebook added that the applicant’s services “will be offered through the same channels of trade as Facebook’s goods and services.”
Facebook further claimed that “[t]he FACEBOOK Marks are strong and famous. Applicant’s Mark is highly similar in sight, sound, and commercial impression to the FACEBOOK Marks.” Facebooks alleged that the KEEPFACE mark is likely to cause confusion with the FACEBOOK marks. The opposition says the new mark could also suggest a connection between the two entities, when there is none. Facebook claimed that the value of Facebook’s marks would be jeopardized by the registration of the applicant’s mark because of the likelihood of confusion between the marks and the entities.
The social media giant added that the “degree of similarity” between the two marks “is so great as to be likely to cause an association between the Parties’ respective marks that impairs the distinctiveness of the FACEBOOK Marks and weakens the connection in the public’s mind between the FACEBOOK Marks and Facebook’s goods and services.” As a result, Facebook argued that the KEEPFACE mark will likely cause dilution to the FACEBOOK mark by blurring because of a number of similarities.
Facebook has sought for its opposition to be sustained and for the registration of the KEEPFACE mark to be refused. Facebook is represented by Kilpatrick Townsend & Stockton LLP.
