From the plaintiff's website: "Inventors of 'The Facebook,' the first universal face book at Harvard University."
"Think Computer Corporation today filed a Petition to Cancel with the United States Patent and Trademark Office regarding Facebook, Inc.'s registered trademark on the term "FACEBOOK," after Think Press was denied the right to advertise its upcoming book, Authoritas: One Student's Harvard Admissions and the Founding of the Facebook Era for trademark reasons." http://www.thinkcomputer.com/corporate/news/pressreleases.ht...
It's difficult to follow, and I haven't read all the legal proceedings, but here is what I have gathered:
* Think Computer coined the term "The Facebook" to describe an in-house portal system at Harvard University which they built, back in 2003.
* At some point Mark Zuckerberg registered "thefacebook.com" and started making a competing student portal. He later renamed this to facebook.com (thefacebook.com still redirects to facebook.com to this day)
* Think Computers was content to let sleeping dogs lie for the most part, but decided that they wanted to publish a book about their portal system and the title of the book contained the words "the facebook".
* Facebook.com sued Think Computers for trademark infringement and got advertisement for the book blocked.
* Think Computers countersued facebook.com, claiming fraud in their trademark, because Mark Zuckerberg was classmates with Think Computers CEO at the time and knew that he had previously coined "the facebook" for his portal system.
* Facebook tried to get the fraud count removed, presumably because if they are found guilty, penalties may extend beyond the loss of the trademark "Facebook".
* The court just ruled that the fraud count will not be removed for the upcoming trial.
I heard there was a printed student guide that was informally called 'the face book' at Harvard (and possibly other places) before any of these online projects got underway.
If so, I suspect the key question is whether that term can be repurposed to become a trademark for vaguely similar, but broader, commercial online services, and which actions of Zuckerberg and others may have served to create a defensible claim on that mark.
I don't want to comment in great detail here, but this analysis is factually incorrect. No civil suits are involved. If you're interested, you should really just read the proceedings.
There were three counts in the initial Petition to Cancel: priority of use, genericness, and fraud against the USPTO. Facebook's attorneys protested very strongly and repeatedly to have the fraud count removed, but with this ruling the USPTO denied both of Facebook's motions.
This does seem odd. As someone who has just filed a trademark, I can say the USPTO is "paid money from the filer" to do a search for name conflict. It is the responsibility of the filer to also search for reasonable conflict. But the purpose of the trademark office and the fees you pay it are for this search.
There must be something really wrong here for fraud charges to stand.
My point is that the trademark registration process is VERY simple. There is not much you can do to commit fraud. You fill out a simple form and submit your name and supporting material such as logo to a search. If the search, based on the category of goods and service you select, is deemed not in conflict with already registered product or services, you get the nod and you are registered.
The whole point of the registration process is you are paying the USPTO a fee to do a search to avoid conflict. Yes, there is an assumption that you are not applying for something you know already is registered by someone else. But the point of the search is a safeguard for this.
I am very interested to understand the details of the fraud aspect of this claim. I am also interested to see how the USPTO's paid search process didn't catch the conflict.
Part of the registration process is that you testify that don't know of any prior existing uses of the trademark by 3rd parties in the field. If you are aware of existing prior uses of your trademark you might have committed fraud in your application.
"Think Computer Corporation today filed a Petition to Cancel with the United States Patent and Trademark Office regarding Facebook, Inc.'s registered trademark on the term "FACEBOOK," after Think Press was denied the right to advertise its upcoming book, Authoritas: One Student's Harvard Admissions and the Founding of the Facebook Era for trademark reasons." http://www.thinkcomputer.com/corporate/news/pressreleases.ht...