Teachbook Needs a Class or Two on Trademarks

     CHICAGO (CN) – Teachbook, a social-networking website geared toward educators, cannot dismiss a trademark lawsuit by the popular predecessor that its name so closely resembles, Facebook, a federal judge ruled.



     The creators of Teachbook touted their website as a means for adults to work around school-enforced bans against teachers having accounts on Facebook or MySpace since students are on these sites in force and could 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,” according to materials on the rival’s website, quoted in Facebook’s complaint. “Teachbook is all about community, utility, and communication for teachers.”
     But Facebook said these claims are nothing but a naked attempt at creating a “substitute for Facebook,” saying Teachbook “adopted the ‘Teachbook’ mark with knowledge of, and the intent to call to mind and create a likelihood of confusion with regard to, and/or trade off the fame of Facebook and the registered ‘Facebook’ marks.”
     Facebook also argued that the use of the “Teachbook” mark, in conjunction with the substantially similar services Teachbook offers, dilutes the “Facebook” trademark.
     The “Teachbook” mark “impairs the distinctiveness of the ‘Facebook’ marks and weakens the connection in consumers’ minds between the ‘Facebook’ marks and Facebook’s services,” the complaint said.
     Teachbook moved to dismiss and submitted over 300 pages of exhibits, many taken from Facebook’s website, to support the argument.
     But U.S. District Court Judge Marvin Aspen declined to give judicial notice to Teachbook’s exhibits last week and denied its motion to dismiss.
     Aspen found that the materials Teachbook presented were inappropriate for the court to review at this stage in the litigation. “Allowing Teachbook to cherry pick portions of Facebook’s website to introduce via a motion to dismiss simply because the complaint implicates the two websites would convert an examination of the complaint in to full-blown summary judgment analysis,” he wrote.
     Teachbook contended that Facebook’s complaint is based on the suffix “-book,” which it argued is a generic component of Facebook’s mark that is not entitled to trademark protection, but the court disagreed.
     “We are not convinced that disaggregating the ‘Facebook’ mark and focusing on the suffix ‘-book’ is appropriate in this case,” the ruling states.
     Even if he focused exclusively on the suffix, “Facebook has still made sufficient allegations to preclude a finding of genericness at this point,” Aspen added.
     Despite differences in the typeface, style and coloration of the marks, the two are sufficiently similar that “it is reasonable to infer that someone browsing the internet might understand Teachbook to be in some way related to, or connected or affiliated with, or sponsored by Facebook,” the court held.
     Notwithstanding Teachbook’s public statements that strictly distinguish it from Facebook and MySpace, Aspen asked “Who is to say these teachers might not think that Teachbook is Facebook’s response to some schools banning teachers from using Facebook?”
     The judge noted that Facebook’s name-recognition was a significant obstacle to Teachmark’s motion.
     “Given the ubiquity Facebook claims its mark has achieved, one could reasonably infer that the choice of the ‘Teachbook’ mark – which, like the ‘Facebook’ mark, is a curt, two-syllable conjunction of otherwise unremarkable words – to offer a similar service in the same medium was no accident,” Aspen concluded.

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