Facebook's app was announced last Thursday, though it didn't reach the App Store until Monday. That was the same day, Jan. 30, that FiftyThree applied for its trademark.
FiftyThree has already been rebuffed when it asked Facebook "nicely" to change the name of its app, and earlier, FiftyThree CEO and co-founder George Petschnigg said that FiftyThree was “keeping its options open.”
It takes time for trademark applications to go public is search queries, so an application made on Jan. 30 showing up on Feb. 4 is not unusual. Typically, the USPTO makes trademark applications public in search within five to seven days.
As we reported earlier, trademark lawyers Roberto Ledesma and Victor Cardona believe that FiftyThree has a case, should it choose to move forward legally.
Cardona said that in certain situations, trademarks are use-based. This means that
just by using a mark in a particular field, you’ve got rights. Some are state-based and some are federal-based, but if I start using a mark before you in the same area of goods or services, I’ve got rights to the mark over you.Ledesma said:
It really will come down to how many third-party Paper marks are out there in this industry, and whether or not FiftyThree’s mark has been made weaker by other third-party marks. But Facebook should know better than to do this.Naturally, though, Facebook has the financial resources to wear down FiftyThree, should it choose to do so.
As the later user, Facebook would have to make the case that these uses are distinguishable and consumers will not be confused. The more similar the marks the less similar the uses have to be to find infringement. Here the marks are identical so less similarity is needed.
How this all pans out -- and if there are enough supporters and users of Paper by FiftyThree to push Facebook to the realization that this isn't the best PR -- remains to be seen.