Would Facebook, by any other name, have been a success? If I had been their trademark lawyer when the company was launched, I would have told them to find a different name because FACEBOOK is not a good trademark for what they do. Why would this have been a bad trademark? A “facebook” is a name that had been used, either formally or informally, by students for a long time.
As everyone who has seen “The Social Network” remembers, they originally called it “The Facebook.” When you decide what to call your company or product, your trademark lawyer is going to try to persuade you not to come up with a descriptive word. When you settle upon an ordinary descriptive term out of the everyday language, you are not going to be able to legally stop others from using the same name. There is a very good chance that some other entity calling itself “The College Facebook” could have used that name back in the day.
Contrast this with an arbitrary word like “APPLE” to sell computers. A name like APPLE, which has nothing to do with the product or its user, helps develop a very strong trademark that no one else can use in your market segment.
What Facebook has going for it now is the benefit of time. No place does time heal all wounds better than in trademark law. Over time, an owner can have acquired exclusive rights even in a descriptive term. When Facebook launched in 2004, the word Facebook was a bad name. Today, of course, the word Facebook means the colossal global social networking (and much more) site.
But winning with a descriptive trademark is a gamble. If you survive those early years, all is good. But, those early years are always the hardest to survive.
Today we can’t imagine Facebook not being Facebook. Does that mean it was a good name? I don’t think so. Facebook has even given up one of its earliest trademark registrations, which described its services as “providing an online directory information service featuring information regarding, and in the nature of, collegiate life, classifieds, virtual community, and social networking.” (U.S. Trademark Registration No. 3,122,052.)
If you’re developing a product or a service that you expect within, say, the next decade or so, to yield you a billion consumers, then go for it. For most companies, big, small and medium, it’s a really good idea to take a name that won’t bog you down in challenges, litigation, and disputes. Descriptive names are the easy way out, and things don’t always end up quite as well as they have for Facebook.
Jess M. Collen
Collen IP Partner
Jess Collen’s expertise in the field of trademark law has long been recognized. He has been active in IP practice for over 30 years and highly involved in the profession, having acted in many capacities, including as a member of the Executive Committee and Board of Directors of the International Trademark Association. He is also a featured Forbes.com contributor, What’s Your Trademark?, which focuses on all aspects of intellectual property. Mr. Collen has represented clients in U.S. District Courts and federal Courts of Appeal across the United States in industries as diverse as watchmaking, consumer electronics, high fashion, fashion eyewear, food, entertainment, software, and other industrial and consumer fields. He was counsel in a copyright infringement case argued before the Supreme Court of the United States.