Posts Tagged United States Patent and Trademark Office
Ongoing Patent Fights Mean Startups Are Now Wasting What Little Money They Have At The Patent Office | Techdirt
Ongoing Patent Fights Mean Startups Are Now Wasting What Little Money They Have At The Patent Office
from the not-cool dept
Last week, I had the chance to chat with the General Counsel of a well known internet company — not a “giant” one, but one you’ve almost certainly heard of — and we got to discussing Twitter’s new patent assignment agreement with its employees, and whether or not other tech companies would start offering the same thing. He was a bit skeptical, and pointed out that, even at a company the size of his (big enough to have a full time general counsel, for example)they had applied for exactly zero patents. He said he’s tried, but none of the engineers at the company have any interest at all in patenting what they’re working on (actually, in talking to someone else later on, I heard that the bigger issue is that some of the employees are thinking about ways to open source their work). Either way, the lawyer noted that, because of that, any patent assignment agreement was something of a waste of time. His company just wasn’t interested.
Unfortunately, it appears that not all startups are working that way. With Yahoo’s patent fightagainst Facebook getting so much attention these days (not to mention other big patent fights involving companies like Google, Apple, Microsoft, Oracle and others…), it seems that startups are (rather reluctantly) spending a lot more time (and money) at the Patent Office.
This is, to put it mildly, crazy. The two biggest scarce resources for startups are time and money. Throwing them away on getting patents is a huge waste, and it’s main purpose is to act as insurance against failure or against jealousy over extreme success. Basically, most patents are completely useless. But if a company is failing, then perhaps it can sell off its patents. And, if a company is succeeding, then suddenly others will start suing it for patent infringement — and the hope (rarely realized) is that having at least a few patents in the portfolio means that other practicing entities won’t sue for fear of getting sued back (patent trolls are exempt from this, however).
It’s really too bad that the state of the patent world today is such that are most innovative companies are basically forced to throw away time and money to apply for patents they never want to use.
One separate aside on this story. The article talks about the Twitter IPA agreement, and later quotes the founders of the startup Everyme as saying they support the IPA, but: “their first three apps were already with the U.S. Patent and Trademark Office by the time IPA was available, though, and they don’t plan to refile them.” This sentence makes no sense. The IPA has nothing to do with the USPTO and the patent filing. It’s merely a part of the assignment agreement, leaving some portion of control with the inventor. In fact, Twitter — who does have some patents — has said that it’s using this agreement retroactively with patents that were applied for before the IPA existed. So there’s no reason to refile the applications at all. In fact, the IPA is entirely separate from the actual patent application.
- Startups Party at the Patent Office (businessweek.com)
- In a Rigged Game, Twitter’s IPA Lets Developers Rewrite the Rules (waxy.org)
- The Innovator’s Patent Agreement (bijansabet.com)
- “The Innovators Patent Agreement (IPA) is a new way to do patent assignment that keeps control in the…” (shortformblog.com)
- Great Start-ups Succeed on Products, not Patents (inc.com)
- Twitter declares neutrality in the tech patent war (newscientist.com)
- Twitter’s IPA Is a Powerful New Tool in the Patent Wars (eff.org)
- How expanding Twitter’s pledge could end the patent wars (venturebeat.com)
- In a Rigged Game, Twitter’s IPA Lets Developers Rewrite the Rules (wired.com)
- Twitter announces new Innovator’s Patent Agreement (buzzom.com)
Facebook asserts trademark on word “book” in new user agreement
| Published a day ago
Facebook has trademarks on its name and many variations of it—including the letter “F”. The company is expanding its claim over the word “book”.
Facebook is trying to expand its trademark rights over the word “book” by adding the claim to a newly revised version of its “Statement of Rights and Responsibilities,” the agreement all users implicitly consent to by using or accessing Facebook.
You may recall that Facebook has launched multiple lawsuits against websites incorporating the word “book” into their names. Facebook, as far as we can tell, doesn’t have a registered trademark on “book.” But trademark rights can be asserted based on use of a term, even if the trademark isn’t registered, and adding the claim to Facebook’s user agreement could boost the company’s standing in future lawsuits filed against sites that use the word.
“Unregistered marks are quite common in the US,” University of Minnesota Law Professor William McGeveran told Ars. “Rights arise from use, not registration (though registration does give you some other advantages). That’s how Facebook can try to claim ‘book.’” If you see a ™ next to a name, that indicates an unregistered, claimed trademark, whereas an R in a circle signifies a registered one, McGeveran notes.
So, what exactly is Facebook changing? If you view the current Statement of Rights and Responsibilities, you’ll find this sentence:
“You will not use our copyrights or trademarks (including Facebook, the Facebook and F Logos, FB, Face, Poke, Wall and 32665), or any confusingly similar marks, without our written permission.”
If you’re wondering, 32665 is the number allowing Facebook users to update their pages through text message. The newly revised user agreement reads as follows (emphasis ours):
“You will not use our copyrights or trademarks (including Facebook, the Facebook 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.”
Not accepting the terms isn’t really an option for anyone with a Facebook account. “By using or accessing Facebook, you agree to this Statement,” the document says.
Facebook gobbles up trademarks on variations of its name
A search of the trademark database maintained by the US Patent and Trademark Office shows Facebook with 73 active trademarks, many of them covering different uses of the words “Facebook” and “like.” Other registered trademarks cover the letter “F,” “Face,” “FB,” the number “0″ with a period, “F8,” “Facebook Developer Garage,” “Wall,” “Facepile,” “Nextstop.com,” “Facebook for good,” “Friendfeed,” Facebook Insights,” “Facebook Pages,” and “Facebook Ads.”
“Book” doesn’t appear on the US list. In November 2010, the Los Angeles Times reported that Facebook was successful in trademarking “Face,” but might have a tougher time gaining rights to the word “book.” A company called myEworkBook filed an application to get the “Book” trademark in the US, but abandoned the application in February 2012 after an unfavorable decision by the trademark review board.
Facebook has a pending trademark application on “book” listed in the European Union’s trademark database, but the current status is “application opposed” with “likelihood of confusion” listed as the reason for opposition. There are already numerous European trademark claims over “book,” but in different contexts than the social media one claimed by Facebook.
Status of lawsuits Facebook filed against other “books”
We contacted Facebook yesterday afternoon, and haven’t heard back from the company. Facebook has had mixed results when asserting trademark rights over “book” in court. Facebook’s lawsuit against “Teachbook” isstill pending. Facebook settled a suit it filed against Lamebook, allowing the parody site to continue operating. Facebook gained control of a porn site domain called “FacebookOfSex.com.” A travel site called Placebook changed its name in 2010, choosing not to fight—no surprise given the large expense of litigation.
“Maybe I was being naïve, but I thought I could convince the lawyers at Facebook that our site was totally impossible to confuse with theirs,” the Placebook site owner wrote in a blog.
How the new user agreement helps Facebook assert the trademark
Clearly, Facebook wasn’t shy about asserting trademark rights on “book” before today. But updating its user agreement gives the company added ammunition in litigation. The updated Statement of Rights and Obligations hasn’t taken effect yet, but a comment period expired yesterday.
“They hope that by putting it in TOS (terms of service) they can improve the enforceability of their asserted trademark rights,” McGeveran said.
The “book” addition to the user agreement isn’t as strong as a registered trademark or copyright, but provides extra protection, says intellectual property attorney Denis Ticak of Benesch, Friedlander, Coplan & Aronoff LLP in Cleveland, Ohio. The difference is that instead of extending to anyone who infringes upon the trademark, the user agreement covers only people who actually use Facebook—which, of course, is a substantial percentage of the population of Earth.
“Adding that term merely changes the agreement we all become a party to when we accept the terms of service/use the site/etc.,” Ticak told Ars. “So, it offers some layer of protection against use of ‘book’ in, say, a company or website name. But, it only extends to those who accept the statement of rights and responsibilities.’ Let’s say you go out and create ‘Brodkinbook.’ Whether or not they have a registered trademark on ‘book,’ since you in all likelihood use Facebook and so have accepted that contract, they can arguably prevent you from using that name on the site.”
- Facebook Asserts Trademark On “Book” In New User Agreement (tech.slashdot.org)
- Broken Hartz Does Not Like This (brokenhartz.wordpress.com)
- You’ve started a business, but is your brand protected? (thenextweb.com)
- What Should Job Seeking Millennials on Facebook Do? (connectwithyourteens.net)
- Trademarks | Franchise Disclosure Documents | Item 13 (minnesotaattorney.com)
- Facebook Faces Jurisdictional Hurdle in its Trademark Lawsuit Against Faceporn–Facebook v. Pedersen (ericgoldman.org)
- Trademark Lawsuit Over Website Text Comparing Products Baffles the Judge–AR Pillow v. Cottrell (ericgoldman.org)
- FACEBOOK Was Born a Lousy Trademark (forbes.com)
- New Trademarkia Feature Exposes Biggest Trademark Bullies; Apple, Zynga Among Top Five (techcrunch.com)
- Rocksmith trademark dispute unresolved (vg247.com)