Facebook’s Timeline May Be Running Out

A District Court denied Facebook’s motion for summary judgment, finding that Facebook had failed to prove that Plaintiff’s trademarks for the term “timeline” were invalid.  Timelines, Inc. v. Facebook, Inc., Case No. 11-cv-6867 (N. D. Ill. April 1, 2013) (available here).  Plaintiff Timelines (“T”) sued Defendant Facebook (“FB”) for reverse and direct trademark infringement.  FB counterclaimed seeking a declaration of non-infringement and cancellation of Plaintiff’s registered marks.  Reverse trademark infringement occurs when a more powerful company, here FB, uses the trademark of a smaller and less powerful senior user, T, resulting in consumers confusing the senior user’s mark as belonging to the more powerful but junior user.

T operates a website wherein users can document events and connect them to other related events to create a larger understanding of what occurred at a particular place and time.  The events can be personal, such as a birthday, or historical, such as a presidential inauguration.  Other users can add additional or new content for that event document.  T’s other website, Lifesnapz.com, allows families to share and record events.  Lifesnapz.com has a timeline feature and the term “timeline” is used in a generic sense.  T owns federally registered trademarks for “Timelines,” “Timelines.com,” and “Timelines” Design.

The term “timeline” has been used generically by many third parties, and witnesses for these third parties state that their companies would be at a disadvantage if they were no longer able to use the term “timeline” to identify their goods or services.  T claimed that its use was different because the timelines on T’s websites were not static, and the term was used for web-based goods or services, not software-based like the third parties.  FB claimed that T’s use was generic or merely descriptive, and that FB’s use of the term “timeline” was fair use.

FB’s website includes a “Timeline” feature, which summarizes a user’s life based on the user’s updates to his or her Facebook profile.  FB knew of T before announcing the Facebook Timeline, and refers to the Facebook Timeline as a product.  FB owns the federally registered trademarks for “WALL,” “POKE,” “LIKE,” “FACEBOOK,” and “FACE.”  FB has successfully protected its marks from other parties filing applications of similar marks.  People familiar with T believed that T and FB had entered into an agreement, and that T’s website was related to the Facebook Timeline.

Generic terms cannot become trademarks.  However, since T has a registered trademark for “Timelines,” the validity of the mark is presumed.  FB has the burden of proving that the mark is invalid.  “However, the classification of Plaintiff’s [T] marks is a question of fact, and not appropriate for a summary judgment ruling, unless Defendant [FB] can demonstrate that the evidence as to Plaintiff’s [T] marks is so obvious that there is no doubt as to how the question of classification of the mark should be answered.”  Facebook, Inc., Slip Op. Pp. 16-17.  FB argued that T’s mark “Timelines” is generic, however FB failed to show that T’s repeated and regular use of the term “timeline(s)” rendered the term generic.  FB then argued that third parties used the term in a generic manner, and that the U.S. Trademark and Patent Office (“PTO”) was aware of this generic use before issuing T’s trademarks.  However, this hurts FB’s argument because the PTO was aware of generic third party use but still registered T’s marks for “Timelines,” therefore the PTO must have felt that T’s mark was more than generic.  As a result, FB did not prove that T’s marks were generic.

FB argued that T’s marks are merely descriptive without a secondary meaning.  “Plaintiff [T] had more than nominal sales and over one-thousand active users on its website, Timelines.com. At this stage in the proceedings, it is not unreasonable to conclude that as to this group of users, ‘’timeline( s )’ had acquired a specific meaning associated with Plaintiff [T].”  Facebook, Inc., Slip Op. P. 21.  FB’s last argument was that its use of the term “timeline” constituted fair use, and therefore non-infringement.  However, the evidence suggested that FB intended to use “Timeline” as a trademark, which takes it out of the fair use defense.  Therefore, FB had failed to show that T’s marks were merely descriptive and failed to show that its use was fair use.  The Court denied FB’s motion for summary judgment.

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