Facebook really doesn’t like websites that have names sounding similar its own. The company has gone after Teachbook, and also filed suit against a racy site called FacebookOfSex.com run by FriendFinder Networks. But could Facebook’s history of tough trademark enforcement be used against it? A U.K. dating site called Shagbook hopes so.
In May, Facebook moved to stop a U.K. dating site called Shagbook from registering a trademark under that name. Now Shagbook is pushing back with a novel claim, saying that the term “facebook” itself is generic and not worthy of a trademark.
In its filing [PDF] with the U.S. Patent and Trademark Office, Shagbook also says that Facebook has been engaged in “trademark bullying,” pushing around other sites and “abusively using oppositions, litigation, and threats of the same to maintain a competitive market advantage.”
Shagbook also goes into the history of the term “facebook,” noting that “books containing pictures of the members of an organization along with biographical information have been in existence for many decades,” used by college fraternities and other groups. Moving these facebooks online and making them searchable was a natural progression, and by 2003 “various universities and colleges around the country had online books” that were often called facebooks. “Widespread uses of the words ‘face’ and ‘book’ in trademarks… pre-date [Facebook’s] existence by decades,” writes Shagbook’s lawyer.
In an interview with paidContent, Shagbook spokesman Mark Brooks said that the founder of Shagbook-who he declined to name-is an American who has spent many years living in the U.K. The founder has been using the term “Shagbook” in his personal life since the year 2000, and created the Shagbook website as a casual dating site in the U.K. back in 2006, before Facebook was popular.
“He very innocently created the name ‘Shagbook,’ using it to refer to his version of the ‘little black book,'” said Brooks, an online-dating industry consultant who blogs at Online Personals Watch.
Shagbook, which is based in the U.K. but also operates in the U.S. and several other English-speaking countries, advertises itself as “the hottest place to hook up with local singles for no strings attached adult dating.” The site suggests that users who sign up could “find a naughty date tonight!”
Shagbook’s filing argues that Facebook is a generic term, and that even Facebook itself has used the term in a generic sense. In any case, Shagbook is specifically a dating site, while Facebook is a general-purpose social networking site, which also means it’s unlikely that consumers will be confused, argues Shagbook’s lawyer.
Actually canceling Facebook’s trademark seems like a real longshot for Shagbook, but it’s notable that the company thinks its name is valuable enough to keep this fight up. It will be interesting to see if the company’s legal strategy of using Facebook’s own history of trademark litigation against it goes anywhere.
Some big internet companies have had some success knocking out sites with names they don’t like-eBay (NSDQ: EBAY) is a prime example, having nuked CoinBay, PerfumeBay, and many other examples. But it’s still far from clear if Facebook will be able to keep the internet clean of sites that end in “-book.com,” especially as all websites increasingly incorporate social features.
Facebook’s lawsuits against Teachbook and FacebookOfSex are both ongoing. The company reached a settlement with a parody site called Lamebook, which is still up.
A Facebook spokesman didn’t respond to a request for comment about the case.