Readers of this newsletter will recall that trademark rights in the United States are established by use, not by registration. There are benefits to registration, of course, but rights arise by the actual use of a mark in commerce in conjunction with a product or service. Often, the assertion of a trademark use is indicated by the placement of the letters TM adjacent the mark. These letters let the public know that the user is claiming trademark rights.

Another generally established principal of trademark law is that one can not, by asserting a trademark right in a word, remove that word from its common language use. In other words, one can not extract from the language the common use of a word by claiming trademark rights in it. However, it is possible to assert a trademark right to a word in the limited context of a particular association or use.

Facebook has been very proactive in trying to establish trademark rights to words it uses in association with its social networking site. For instance as of March 26, 2012, the United State Patent and Trademark Office has granted trademark registrations for FACEBOOK and WALL. Pending applications include: LIKE and FB among others. The use of FACE as a trademark has also been approved by the USPTO.  Registration is awaiting proof from Facebook that it actually has used the mark in commerce.

To establish trademark rights to a word, it is useful to demonstrate that the public associates the use of the word with a product or service. Which brings us to the present interesting attempt by Facebook to begin to establish rights to the word “BOOK.” The recently proposed Facebook user agreement open for public comment states: “You will not use our copyrights or trademarks (including Facebook, the Faceboo, and F Logos, FB, Face, Poke, Book and Wall) or any confusingly similar marks, except as expressly permitted by our Brand Usage Guidelines or with our prior written permission.” So, following these guidelines, use of your Facebook account mandates that you recognize BOOK as a trademark belonging to Facebook. This may be an end run by Facebook to bolster future argument against other users of the word BOOK that Facebook has already established in the public’s mind an association between the word BOOK with Facebook. What do you think of this strategy?

— Laurence Weinberger, Esq.