Face is Their Fortune

November 25, 2010

Facebook has been granted a ‘notice of allowance’ to trade mark the word ‘face’ by the US Patent and Trademark Office (USPTO). The social networking site has previously taken aggressive legal action against sites with ‘face’ or ‘book’ in their name, such as Teachbook and Faceporn, and this move is an extension of that. Before the trade mark can be registered, however, Facebook will need to prove its commercial use of the mark in the US by filing a Stement of Use – and then pay a fee.

Aidan Clarke, Trade Mark Partner at Marks & Clerk LLP, the leading intellectual property firm, comments:

“The move is reminiscent of EasyGroup’s crusade to trade mark use of the word ‘easy’ in order to unify their brand offering, from EasyHotel to EasyCruise, and go after third party uses of other ‘easy’ marks. The right to the word ‘face’ would certainly prove a much more powerful weapon than simply having a trade mark for ‘facebook’, and it would also lend the company flexibility to use the ‘face’ prefix for future product extensions. Facebook’s various past wranglings with sites that have ‘face’ or ‘book’ in their name is testament to its determination to monopolise these terms and ensure the reach of their brand. The company has made similar moves to register ‘book’.

The notice of allowance means that Facebook has essentially been given the green light by the authorities. However a quirk of the US system means that it will need to demonstrate commercial use of ‘face’, rather than ‘facebook’, before it can register the mark, and this could prove to be a snag. Interestingly enough, European trade mark law doesn’t require any such demonstration of use, and in fact the mark is now registered in Europe.

Nevertheless, not every company with the word ‘face’ as part of its brand should necessarily be worried. The protection in the US at least covers only a very specific category of commercial enterprises within a sub-sector of the telecommunications space, namely the sorts of activities that comprise online social networking. ‘Fatface’ the clothing company and Apple’s ‘FaceTime’ software, to name but a few examples, have nothing to be concerned about. Not unless Facebook begins extending its brand beyond the social networking sphere.”