Analyzing the Looming Trademark Disputes Over Facebook’s “Paper” (Part 1 of 3)
It has been widely reported that Facebook’s release of its “Paper” app has created a stir about trademark rights. As reported by TechCrunch, Facebook’s release prompted FiftyThree, Inc. to complain about its prior rights in the brand “Paper.” FiftyThree owns the registered mark “Paper by FiftyThree.” Also, on the same day that Facebook released its Paper app, FifthThree, Inc. applied to register the mark “Paper.”
FiftyThree has complained on its blog about Facebook’s use of the name “Paper.”
“We reached out to Facebook about the confusion their app was creating, and they apologized for not contacting us sooner. But an earnest apology should come with a remedy.”
Indeed, FiftyThree is not the only company to take notice of Facebook’s use of the term Paper. On January 31, 2014, the next day after Faceook released its app, another company, Paper Communications, Inc., who owns Paper Publishing, Inc., publisher of “Paper Magazine,” filed multiple applications to register the mark “Paper” in association with websites and magazines in the fields of style, fashion, news, music, the arts, culture, nightlife, and entertainment.
This three part series overviews some of the trademark law issues concerning these looming disputes. This first post analyzes the legal considerations governing whether the use of the term “Paper” by FiftyThree and Paper Communications is entitled to trademark protection.
Can One Trademark a Common Word Like “Paper”?
After news broke about the potential dispute over Facebook’s use of the name “Paper,” it was common to hear people ask “how can someone trademark a word that we all use everyday.” To answer that question, we first need to understand that trademark law protects the use of a word (or other symbol) as an indicator of the source of a good or service (e.g., a brand). Accordingly, a trademark owner only has the right to prevent others from using that mark in a way that causes customer confusion as to the source of goods or services. Trademark law does not provide an owner with broad monopoly rights over the use of a word.
Distinctive v. Descriptive Marks
Because of this, trademark law makes it more difficult to claim trademark rights in a name that describes the underlying goods or services. The law refers to this as the “spectrum of distinctiveness.” We have blogged about this in the past. On one hand, coined or arbitrary marks (like Google, Coca-Cola or Apple) do not describe the underlying good or service and are therefore considered highly distinctive and entitled to trademark protection. They could serve no other purpose than to indicate the provider of the product. On the other hand, a mark that describes the underlying good or service is presumed to serve as a description of that good or service rather than an identifier of the source of the good or service. It would be unfair to grant a particular entity rights in a word that serves as a common description of a product the market.
Can Descriptive Marks Obtain ™ Protection?
While a descriptive mark may eventually gain trademark status, the owner will have to show that the mark has “acquired distinctiveness.” This is typically done by showing that the relevant consuming public views the mark as an indicator of the source of the goods rather than a description of the goods. Microsoft’s “Windows” brand was famously deemed to be a mere description of the Microsoft operating system. It only acquired trademark status after Microsoft showed it had acquired secondary meaning as an indicator that the operating system was sold by a particular provider – Microsoft.
Is “Paper” Descriptive?
In the case of the FiftyThree and Paper Communications applications to register the “Paper” mark, questions may exist as to whether the “Paper” brand is descriptive. As described on its website, FiftyThree’s “Paper” app provides:
Five essential tools optimized for the creative process to Sketch, Write, Draw, Outline and Color.
These are actions which normally occur on paper. Paper Communications uses the “Paper” mark in association with its popular Paper Magazine (available both online, and in paper). If a dispute erupts, Facebook will likely argue that both of these marks are descriptive.and therefore “weak” marks on the spectrum of distinctiveness, if not entirely unprotectable.
Can FiftyThree and Paper Communications Demonstrate Secondary Meaning?
As discussed above, even if these marks are, in fact, descriptive, and not inherently distinctive, FiftyThree and Paper Communications could establish trademark protection by providing evidence of “secondary meaning” (i.e., that the relevant consuming public views these marks as indicating the source, rather than the nature, of the goods or services). Paper Communications is in particularly good shape to show secondary meaning and therefore obtain a federal trademark registration. The trademark office will assume a mark has obtained secondary meaning through the applicant’s continuous and exclusive use for five years. According to the Paper Communications application, they have used the “Paper” mark since at least 1996.
While FiftyThree has only used the “Paper” mark since 2012, it will not be entitled to the presumption of secondary meaning (having less than five years of continuous use) but it may still be able to prove secondary meaning through other evidence.