Not long ago, with plenty of fanfare and speculation, Facebook Inc. went public. Since then, Facebook has been implementing new changes to its website operation and layout. Some people like the changes more than others. One company, Timelines.com, an online scrapbooking company based in Chicago, took issue with one of the changes — the profile “timeline” element. Apparently, Timeline.com’s trademark attorney believe Facebook’s timeline infringes Timeline.com’s “timeline” brand.
Timelines.com filed a trademark application for the mark “timelines” on May 23, 2008 and was granted a trademark registration for the mark on May 4, 2010. So on September 29, 2012, Timelines.com had its trademark attorneys file a lawsuit against Facebook for trademark infringement. Facebook had its trademark attorneys file a counterclaim to invalidate Timelines’ trademark.
Last week the U.S. District Court for the Northern District of Illinois set a trial date of April 22, 2013 for the companies’ trademark attorneys to battle it out. At issue is whether or not the term “timelines” is generic enough to be invalidated as a registered trademark. Facebook’s trademark attorneys say it most definitely is. Timelines argues that it owns a valid trademark registration for the mark, which they don’t consider to be generic at all. According to a post on Timelines’ website:
Our company owns a valid trademark on the term “Timelines” that is for a particular application, specifically for “providing a website that gives users the ability to create customized Web pages featuring user-defined information about historical, current and upcoming events.” We’ve spent years building this brand and using it in the above stated way on our site, Timelines.com. 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 — is using the name “Timeline” for a new product that is focused on how people express and share events and history online. Facebook either knew or should have known (given their rigorous defense of their own intellectual property) that the U.S. Patent and Trademark Office granted us this trademark. People at Facebook could have at least contacted us for permission to use or license the name. They did not.
Let’s be clear: We aren’t against Facebook launching this new service. Our issue is that they’ve named and branded the service “Timeline.”
It is interesting to note that Timeline.com’s trademark registration is registered on the USPTO’s Principal Register. A trademark registration on the Principal Register receives an evidentiary presumption that the trademark is “distinctive” rather than “descriptive”. That means Facebook’s trademark attorneys will be saddles with the burden to prove the “timelines” mark is generic or descriptive. This burden shifting arising from the trademark registration may save Timeline.com significant legal fees. Engaging a trademark attorney early on to assist in filing a trademark application can pay for itself down the road when enforcing the trademark.
Registering a trademark early on is also important because many trademark rights accrue with time. For example, a mark registered on the Principal Register for five year may be able to obtain incontestable statue, which prevents third party challengers from invalidating the registration except in very limited circumstances. Similarly, the longer and more extensively a mark on the Supplement Register is used in commerce, the stronger it becomes and the easier it is to show it has acquired distinctiveness. A descriptive mark that has been used in commerce for over five years may be able to receive a presumption of acquired distinctiveness and be registered on the Principal Register.
Of course, it would have been easier for Facebook’s trademark attorneys to argue that the “timelines” mark is generic had it been registered on the Supplemental Register. But Timelines.com has two registered trademarks for “timelines,” both on the Principal Register, and both live. Kudos to Timelines.com’s trademark attorneys!
In a comedic note, Timelines.com fans who are interested in following the progress of the case can go to Timelines’ company page…on Facebook.