The Protectability of "Book” Marks; Facebook Re-Files Trademark Complaint against Teachbook after Jurisdictional Dismissal

The Protectability of "Book” Marks; Facebook Re-Files Trademark Complaint against Teachbook after Jurisdictional Dismissal

Last week, the District Court for the Northern District of California dismissed Facebook's trademark complaint against Teachbook. The dismissal was based on a lack of personal jurisdiction.

On May 6th, Facebook re-filed in the Northern District of Illinois.           

Last Week's Dismissal

Facebook filed its action on August 12, 2010, alleging trademark infringement and dilution of the FACEBOOK mark. In support of personal jurisdiction, Facebook alleged that Teachbook had sufficient "minimum contacts" with California.

In Facebook, Inc. v., LLC, 2011 U.S. Dist. LEXIS 48590 (N.D. Cal. May 2, 2011) [enhanced version available to subscribers], the court addressed the jurisdictional issue under the three-prong test set out in Schwarzenegger v. Fred Martin Motor Co., 374 F.3d 797 (9th Cir. Cal. 2004) [enhanced version / unenhanced version available from lexisONE Free Case Law]. With respect to the first prong:

... in cases sounding in tort, such as a suit for trademark infringement, the court must determine whether the conduct at issue was "purposefully directed" at the forum.  ... The "effects" test requires that the defendant allegedly have (1) committed an intentional act, (2) expressly aimed at the forum state, (3) causing harm  that the defendant knows is likely to be suffered in the forum state.

(citations omitted)

Facebook argued that it had satisfied the effects test by making a prima facie showing that Teachbook: (1) intentionally selected a confusingly similar trademark; (2) intended to compete with Facebook, a California resident; and (3) knew that its use of the TEACHBOOK mark would injure Facebook at its headquarters in California.

In rejecting Facebook's argument, the court held that Teachbook's conduct did not satisfy the Ninth Circuit's requirement that there be "something more" than foreseeable effects in the forum state. The court noted:

Here, Teachbook's alleged intentional act-adopting an infringing trademark-was expressly aimed at potential users of Teachbook's website. Teachbook does not register users in California. Thus, even if Teachbook intended to compete with a California company, it intended to compete for users who were not in California. The fact that an essentially passive Internet advertisement may be accessible in the plaintiff's home state without "something more" is not enough to support personal jurisdiction in a trademark infringement suit brought in the plaintiff's home state.


None of Teachbook's acts was purposefully directed at California; to the contrary, Teachbook took purposeful steps to avoid the California market. Facebook has failed to identify "something more" than foreseeable effects in the forum.

(citations omitted)

Re-filing in the Northern District of Illinios

Last Friday, Facebook re-filed its trademark complaint in the Northern District of Illinois, Teachbook's alleged residence. Facebook v. Teachbook, 11-cv-03052 (N.D. Ill. May 6, 2011). Facebook alleges:

Defendant has touted on its website that TEACHBOOK is a substitute for Facebook: "Many schools forbid their teachers to maintain Facebook and MySpace accounts because of the danger that students might learn personal information about their teachers. With Teachbook, you can manage your profile so that only other teachers and/or school administrators can see your personal information, blogs, posts, and so on. Teachbook is all about community, utility, and communication for teachers." Defendant uses the TEACHBOOK Mark in connection with offering and/or promoting the aforementioned online networking services.

Interestingly, the California court noted that Teachbook had commissioned a trademark search before applying to register the TEACHBOOK mark with the USPTO. As noted:

Teachbook commissioned a trademark clearance search which revealed thirty-one "-BOOK" formative marks for interactive computer services, including ten marks that were first used in commerce prior to Facebook.  The search disclosed by Teachbook revealed that Facebook  had filed extensions of time to oppose several -BOOK marks, but that Facebook  had not yet opposed any of the -BOOK marks. Teachbook's search allegedly did not reveal that Facebook had opposed registration of the DATEBOOK mark in 2007, because that opposition had been resolved by the applicant's default and abandonment of the application.

Other items of interest:

2-7A Gilson on Trademarks § 7A.10[2][a] Gripe Sites and Fan Sites - Fan Sites; In General. (Non-subscribers can purchase Gilson on Trademarks at the LexisNexis Bookstore)

In addition to stand-alone fan web sites, there are also unofficial fan pages on social networking sites. For example, Facebook allows members to create "Facebook Pages," or web pages within Facebook that give businesses, sports teams, artists, musicians and products a presence on the site. On these Pages users can "friend" a brand or celebrity, thereby ....

3-11 Gilson on Trademarks § 11.02[2][k][iii][C] Parties - Defendants;  Fans; Provide Authorized Forums for Fan Activity; Post Pages on Social Networking Sites. (Non-subscribers can purchase Gilson on Trademarks at the LexisNexis Bookstore)

Trademark owners may want to post an official page on social networking sites like Facebook before someone else posts an unofficial page under the trademark. But, just as with the stand-alone fan sites and fan clubs, the trademark owner must supervise these pages for inappropriate content. Fans can post ....

YourName(R) - Trademark Protection is Coming to Social Networks

Oh, baby, baby, it's a wild, unregulated world. Facebook and LinkedIn, among other online social networks, are vast private communities that have thrived without oversight from any policy-making body. And new social ....

NLRB Puts Social Media Policies Under Scrutiny

While an innovative social media campaign can be a great boon to business, corporate America is becoming increasingly aware of the inherent dangers of social media as well. In particular, employees' statements about ....

Webcast: Overview of 2010 Developments in Lanham Act, Social Media, Trademark, and Copyright Law

2010 saw important developments in intellectual property and technology law, but what do these changes mean for 2011 and beyond? Please join us for one or both of our breakfast programs as we review developments of the past year and look toward trends for the future.


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