Trademark Challenge for Facebook’s Paper App?
Facebook recently launched a new application named Paper. The app integrates your Facebook feed with a news reader. The goal, of course, is to get people to spend more time reading and being exposed to ads on Facebook and its related applications. However, it may come as no surprise that someone else had already thought to name their application “Paper” – FiftyThree, Inc., a San Francisco-based startup, has a popular illustration app with that name. We all know the rules of Rock, Paper, Scissors, but what about Paper v. Paper?
FiftyThree’s Paper, while certainly not the size of Facebook, has tens of millions of users and was named Apple’s 2012 App of the Year. So, while the New York Times suggested that this might be a David vs. Goliath story, it’s really more like Goliath vs. a smaller Goliath.
FiftyThree has a United States Patent and Trademark Office (USPTO) trademark registration for PAPER BY FIFTYTHREE (registered as of December 31, 2013) for a “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.”
FiftyThree posted a public letter on its website asking Facebook to “stop using our brand name.” Georg Petschnigg, co-founder and chief executive of FiftyThree, said that “their response was that they apologized for not letting us know sooner, but as it stands, they are continuing with their launch.”
On February 3, 2014, in response to Facebook’s announcement, FiftyThree filed a USPTO application to register the mark 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.” Their first date of use in commerce is March 29, 2012.
Clearly, FiftyThree is building the record for a looming dispute with Facebook. The limited nature of their initial USPTO filing might work against them – along with the fact that they registered PAPER BY FIFTYTHREE – but, from where I sit, there is a fairly strong likelihood of confusion trademark claim to be made against Facebook. My sense is that the issue rests on whether the apps are sufficiently similar to give rise to confusion. Can there be an illustration app named Paper and a social news app named Paper? Given that they are all purchased primarily through a small number of app stores, which often list apps by name, it’s certainly possible that consumers would be confused. On the other hand, there are quite a few other apps using the name “Paper,” alone or in combination with other words. Has FiftyThree established a record of protecting its rights as against those other parties?
Stay tuned as to whether FiftyThree takes legal action or if (as I predict) the parties decide to quietly settle the matter.
