On the same day that Facebook announced the launch of Timeline in New Zealand, the company took another decisive step in rolling out its digital scrapbook feature in America. On Tuesday, it filed a counter lawsuit against a small Chicago company that is trying to stop the social networking giant from using the Timeline name.
Recall that Timelines.com, a website that lets users make historical scrapbooks, sued to stop Facebook from using its trademarked “Timeline.” The smaller site claimed in its September lawsuit that it would be “rolled over” and “eliminated” due to customer confusion between the two services. In response, a court granted a temporary order requiring Facebook to limit its Timeline rollout only to developers.
The temporary order has since expired and the parties have also agreed to delay a scheduled court hearing until January, possibly to facilitate negotiations.
But on Tuesday, Facebook dropped the legal equivalent of a bunker-buster on its rival with a new filing that asks a court to strip Timelines.com of its trademarks. The claim asks the court to declare that Facebook is not infringing and to cancel the marks because they are generic.
Under trademark law, there are five categories of marks. The weakest ones are so-called generic and descriptive terms like “fresh” or “fast” and the strongest ones are what courts call “fanciful” ones such as Oreo or Spotify. Courts have the power to cancel weak marks.
In its filing, Facebook provides examples to show that “timeline” is simply a descriptive, commonly-used word. It lists ten other websites that uses the word, including Google (NSDQ: GOOG) which offers “an interactive timeline tool allowing users to “travel through time” of Google’s company history.” Facebook says the U.S. Trademark office referred to such sites in November when it refused to expand the scope of Timelines.com’s trademarks.
Facebook is playing a risky game here in choosing to fight not settle. If it decides to publicly launch Timeline in the U.S. without clearing up the trademark issue, Timelines.com could seek a preliminary injunction forcing it to take down the name. This would be a huge and expensive nuisance for Facebook and thousands of its developers. If this scenario sounds far-fetched, take note that Research In Motion just lost a humiliating trademark dispute this week that forced it to change the name of its new operating system.
It should be noted that Facebook’s campaign to proclaim “timeline” generic is a bit rich in light of the lawsuits it has filed to stop other companies from using “face” or “book” in their name. Recent examples include cases against Teachbook and Lamebook. One could also point out the word “facebook” is itself descriptive — the word describes the book of pictures and bios of classmates that colleges give out to incoming freshmen.
It is possible that the new court filing is part of high-priced posturing ahead of a settlement. But for now the ball is in Timelines’ court. The company is up against a team of at least nine Facebook lawyers whose strategy may be to drag out the lawsuit in the hope that expensive legal bills will force its rival to give up.
The Chicago company, which still has a help-us-fight-Facebook message on its homepage, is represented by media law powerhouse Reed Smith. Law firms typically do not reveal what they are charging or if they are working on commission.
Contacted by email, Timelines.com said it had no comment. Facebook has yet to reply.