FiftyThree Inc., which markets a sketching app called “Paper,” says that Facebook should refrain from using the same name for its new news-reader app.
The sketching app was launched in 2012 and named iPad’s “App of the Year.” FiftyThree claims that the app has been downloaded 100 million times.
FiftyThree has held a federal trademark for the name “Paper by FiftyThree” since December 31, 2013. It applied for a trademark for the word “Paper,” standing alone, on January 30, 2014 – the day that it claims to have learned about Facebook’s app.
Facebook does not own a federal trademark for the term “Paper.”
FiftyThree’s founder said that he reached out to Facebook about the “confusion” between the names and that Facebook offered an apology but nothing else. FiftyThree has publically asked Facebook to stop using the “Paper” mark but has apparently not yet filed suit.
In addition to its federal trademark rights, FiftyThree may be able to assert a common-law trademark to the “Paper” name based on its two years of prior use in the app field.
A word can only be considered a trademark if it is “distinctive” – i.e., if it can distinguish one type of goods from another. Trademarks are ranked from most distinctive to least distinctive as follows:
“Fanciful” terms include made-up words like “Kodak.”
“Arbitrary” trademarks use words with common meanings but apply them in an unrelated context. For example, “Apple” would be considered generic if used for “Apple”-brand apple juice, but is arbitrary when used for computers.
“Suggestive” marks are very similar to “Descriptive” marks but are not quite as overtly descriptive. For example, “Microsoft” is considered a suggestive mark.