December 23, 2011
With Timeline rolled out internationally, Facebook can now devote its efforts to fighting Timelines.com, which sued the social network in late September for infringing its trademark on “Timelines.”
Since then, the court rejected Timelines.com’s request to temporarily restrain Facebook from using the name, and Facebook filed a countersuit asking the court to cancel Timelines.com’s trademarks as generic. The full lawsuit is still ongoing.
Granted in September 2009, Timelines.com’s trademark is for “providing a web site that gives users the ability to create customized web pages featuring user-defined information about historical, current and upcoming events.” The Chicago-based company, founded in 2007, lets users collaborate to create historical timelines about events like Obama’s inauguration, the Boston Tea Party, or a major league baseball game. According to their website:
“Facebook, a company that has applied for or trademarked the terms ‘Face,’ ‘Wall,’ and ‘Like’ as well as sued others for using ‘Book’ in their names … either knew or should have known (given their rigorous defense of their own intellectual property) that the US Patent and Trademark Office granted us this trademark.”
As the battle continues, at least two questions will be paramount.
1. Is Timelines.com’s trademark “weak”?
Trademarks range from weak (generic terms like “easy”) to strong (fanciful terms like “Pepsi” or “Gowalla”). One suggestion that “timeline” is weak is the fact that other sites, such as Twitter and Wikipedia, use the term.
Assuming the trademark is declared weak, a judge said that Timelines.com “would have to show that the term ‘Timelines’ has acquired a secondary meaning to customers such that they uniquely associate the term” with them.
2. Are customers confused?
In other words, is the term “Timeline” being used so as “to cause confusion, or to cause mistake, or to deceive”? This includes cases where the infringing company is deliberately copying the other company’s trademark to steal its customers. For example, over in Vietnam, you can spot green-colored MeiLinh taxis imitating MaiLinh, a well-known and reputable company recommended by Lonely Planet.
While the meaning of Timelines.com’s Timelines and Facebook Timeline is very similar – a historical record of events – the sites are extremely different. Timelines on Timelines.com are collaborations by users, usually about public or historical events, while Facebook Timelines are personal histories created by individuals. Timelines.com relies on user-inputted entries, while Facebook mainly relies on data automatically generated from site activity (although users can also add important life events to their Timeline).
So where exactly is the confusion? Will users seeking to create historical timelines stumble on and start using Facebook? Will Timelines.com users move their activity over to Facebook? Both unlikely. But confusion could arise from Facebook users thinking Facebook Timeline is powered by Timelines.com, which is detrimental to the company if they don’t want to be associated with Facebook’s privacy missteps and targeted advertising.
Further, this question of confusion is complicated by Facebook’s temporarily redirecting facebook.com/timelines – which is Timelines.com’s fan page – to an introduction to Facebook Timeline.
Public opinion seems largely antagonistic to Timelines.com, as many media sites blamed the lawsuit for delaying Facebook’s much-anticipated redesign. Some see it as a blatant attempt at free PR, while Timelines.com alleges that they simply want to preserve the goodwill of their customers. In any case, a ruling for Facebook could be a blow to startups that rely on intellectual property to attract potential VCs.
What do you think? Who should win, and how will the case be resolved?
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