On Wednesday, Facebook filed an opposition before the Trademark Trial and Appeal Board against applicant Daniel Stallard’s DOGBOOK trademark application over the likelihood of confusion and dilution of its trademarks.
Facebook alleged that it will be harmed by the registration of the DOGBOOK trademark. Specifically, Facebook claimed that it “validly and continuously used the FACEBOOK” marks in connection with a variety of goods and services, such as its online networking service, since at least February 2004. Facebook asserted that its marks “are highly distinctive with regard to social media, electronic publications, and online networking goods and services.” Additionally, the FACEBOOK marks are highly recognizable.
The DOGBOOK trademark application was published in International Class 45 in connection with “Internet-based social networking services; online social networking services.” Facebook claimed that the applicant’s DOGBOOK mark and the FACEBOOK marks are “highly similar in sight, sound, and commercial impression,” noting that both marks contain ‘book’ as the second half of their marks’ phrase. Furthermore, both marks cover similar internet-based networking services, thus they are allegedly related goods and services, that will supposedly “be offered through the same channels of trade or in the same manner as Facebook’s goods or services. As a result, Facebook proffered that there is a likelihood of consumer confusion between the marks, or that consumers could create a false association or connection between the two marks and entities.
Facebook also claimed that its famous marks could be diluted if DOGBOOK is trademarked. Facebook alleged that its marks will lose their “inherently distinctive” quality “in relation to goods and services for online networking and sharing.” Facebook added that its marks are also likely to be diluted because of their similarity, which is likely to cause the public to create an association between the two marks and entities and their goods and services.
As a result of the likelihood of confusion with and the dilution of the FACEBOOK marks, Facebook has opposed the registration of the application; Facebook has sought for the registration of the DOGBOOK application to be refused.
Facebook is represented by Kilpatrick Townsend & Stockton LLP.