andour & Associates／2024-10-25

Meta Platforms – the company formerly known as Facebook – has had its hands full in the intellectual property world recently. When the company first changed its name to Meta, several brands sought to stop the rebranding with the U.S. Patent and Trademark Office (USPTO). However, now it’s Meta that’s targeting the trademark usage of other companies — this time going after MemoryBook.

Even though the social media giant has rebranded, its Facebook trademark is still highly protected. Of course, the question sometimes arises of how far this protection goes. With a new trademark opposition notice filed on October 10, 2024, Meta Platforms seems poised to argue that certain companies cannot even use the word “book” in their names. And it’s not the first time.

The case that follows will no doubt be interesting.

MemoryBook vs Facebook: Battle of the Books

On December 29, 2023, the USPTO received an application from MemoryLane seeking trademark registration for the word “MemoryBook.” The company claimed it had a bona fide intent to use the trademark in commerce, and although it took several months, the application was eventually published in the Official Gazette for an opposition period.

Just one month after MemoryBook was published for opposition, Meta Platforms filed an opposition to prevent registration. In its filing, Meta claims that “MemoryBook” is too similar to the “Facebook” trademark.  Meta argues that registration would dilute their trademark and create a likelihood of confusion among consumers.

To the untrained eye, it may seem as if Meta Platforms is claiming ownership over the word “book.” In a certain way, they are – but as with most issues in intellectual property law, the reality is much more complex and nuanced than it appears.

Can Facebook Really Trademark the Word “Book”?

To be clear, Facebook doesn’t actually have a trademark over the word “book.” They have numerous trademarks for “Facebook” in a variety of trademark classes, but none of the registrations grant them exclusive usage of the word “book.” The issue at hand seems to arise from the fact that MemoryBook looks poised to enter the social media world.

MemoryLane filed its registration as an intent-to-use trademark for a social media platform. Since this would put it in the same channels of trade as Facebook, there’s an argument to be made that consumers might believe the website is run by Meta Platforms and related to Facebook. The question is whether consumers would actually confuse the two brands.

This isn’t the first time Facebook has aimed to prevent other companies from using the word “book.” In August 2010, the social media platform filed a lawsuit against the Teachbook website, claiming they were trying to be the “Facebook of teachers.” They also sought to bring down the website known as Lamebook – a parody site targeting Zuckerberg’s creation.

What Happens Now?

The Facebook trademark clearly enjoys broad protections under domestic and international trademark law. It would be great if we could look at former cases to see how successful Meta Platforms might be in its case, but it seems that each time Facebook has targeted another company, the case has ended in settlement.

In the case of Teachbook, the smaller brand eventually changed its name to TeachQuest. When looking at the Lamebook platform, the brand only had to add a disclaimer to its website. It seems that few companies want to “go the distance” in a trademark fight with Meta Platforms. This may be partially explained by the fact that – as of October 2024 – Facebook is estimated to have a market capitalization of around $1.5 trillion dollars.

Very few companies on this earth have the necessary resources to take on Facebook in court, which may end up being the case in MemoryLane’s attempt to trademark MemoryBook. However, the opposition filing shows that the fledgling social media brand has until November 19, 2024 to file an answer with the USPTO.

If they plan on fighting back, this indeed will be an instance of David versus Goliath – just with Instagrammable rather than biblical repercussions.