A letter from Paper (FiftyThree) to Paper (Facebook) • Hacker News Board

Re: A letter from Paper (FiftyThree) to Paper (Facebook)

#101

Post by ynniv » Mon, Feb 03, 2014, 6:15 PM UTC

ig1 wrote: post #93

ynniv wrote: post #47

Earlier quoted context omitted.

"Facebook" is also pretty generic, but when you have enough well paid lawyers these things matter less. Also, it is very unlikely that Facebook is attempting to benefit from 53's brand. Facebook wanted to call their product something descriptive, and the names collided. Compare this to any name involving "Facebook", which likely is attempting to benefit. Outside of a directly competing service, it's unlikely that the…

Facebook was completely generic. Facebook used to be term for the paperback student profile books that universities produced. Facebook the website started as an electronic version of the paper facebooks.

Facebook was completely generic.

Yes, Facebook WAS generic. They would have had a difficult time enforcing their brand from the start. Once a brand becomes a household name (which is admittedly a vague metric), the rules are different. See Apple, Windows, Sun, Sharp, Digital.

Re: A letter from Paper (FiftyThree) to Paper (Facebook)

#102

Post by plusbryan » Mon, Feb 03, 2014, 6:18 PM UTC

Won't this only benefit FiftyThree now that many more people are searching the App Store for "Paper"? Seems like a victimless crime.

Re: A letter from Paper (FiftyThree) to Paper (Facebook)

#103

Post by wavesplash » Mon, Feb 03, 2014, 6:18 PM UTC

There are some great opinions posted so let me add some data from uspto.gov (use 'trademark search' from the menu) and a touch of what I understand of Trademark law after filing a few myself:

53 was granted a US Trademark on the phrase 'Paper by FiftyThree' on December 2013 for trademark categories 21 23 26 36 38 and it appears international category 9 with a first-used-in-commerce claim of March 2013.

53 are obligated to enforce their mark in those categories otherwise they risk losing it. This is the same reason Facebook goes after anything with 'face or book' that even vaguely seems similar. If they don't they risk losing the Facebook mark.

The law sides with the trademark holder as long as they enforce the mark.

As many people have mentioned, 'Paper' is generic and 53 didn't get the word 'Paper' by itself. It was granted the mark 'Paper by FiftyThree'. Since Facebook's app isn't called 'Paper by Facebook' this leaves some wiggle room if FB wants to challenge the claim if it heads to court. Facebook has deep pockets and good lawyers, so perhaps they've already calculated the risk and is willing to fight in court. 53 may not be able to afford that fight (cash or distraction wise).

TL;DR: 53 is obligated to enforce their Trademark and the letter to Facebook is a manifestation of that obligation. Unfortunately their mark isn't just on the word 'paper' so it will be interesting to see if this fades away or the parties head to court.

Re: A letter from Paper (FiftyThree) to Paper (Facebook)

#104

Post by rplnt » Mon, Feb 03, 2014, 6:18 PM UTC

metaphorm wrote: post #82

ynniv wrote: post #22

People are going to call the app by Facebook "Facebook Paper" because "Paper" is simply too generic. 53's drawing app name is not strong either. Their iOS app is not called "Paper", but "Paper by FiftyThree". Their icon is not of paper, but of a napkin style rendering of "53". For all intents, the drawing simulation brand name is "FiftyThree". There was a brief moment in history when people thought "I wonder if 53 wa…

sorry, but that's not how trademark and branding works. Perhaps you should try bringing to market a product called "Coca-Cola by Ynniv" and you can find out for yourself how this really works.

Coca-Cola is not an English word describing generic real-world item. Paper is. I see your point (and to a degree agree), but your example is heavily flawed.

Re: A letter from Paper (FiftyThree) to Paper (Facebook)

#105

Post by amjaeger » Mon, Feb 03, 2014, 6:19 PM UTC

next they're going to write to wb mason that they should change the name of their product to "printer sheet" or something like that....

Re: A letter from Paper (FiftyThree) to Paper (Facebook)

#106

Post by xxchan » Mon, Feb 03, 2014, 6:20 PM UTC

metaphorm wrote: post #82

ynniv wrote: post #22

People are going to call the app by Facebook "Facebook Paper" because "Paper" is simply too generic. 53's drawing app name is not strong either. Their iOS app is not called "Paper", but "Paper by FiftyThree". Their icon is not of paper, but of a napkin style rendering of "53". For all intents, the drawing simulation brand name is "FiftyThree". There was a brief moment in history when people thought "I wonder if 53 wa…

sorry, but that's not how trademark and branding works. Perhaps you should try bringing to market a product called "Coca-Cola by Ynniv" and you can find out for yourself how this really works.

You might be surprised to learn that in the trademark law, common words like "paper" or "candy" can be used by multiple companies without them infringing on each other while "Coca-Cola" is way too specific for that.

Re: A letter from Paper (FiftyThree) to Paper (Facebook)

#107

Post by CatMtKing » Mon, Feb 03, 2014, 6:21 PM UTC

fleitz wrote: post #40

ynniv wrote: post #22

People are going to call the app by Facebook "Facebook Paper" because "Paper" is simply too generic. 53's drawing app name is not strong either. Their iOS app is not called "Paper", but "Paper by FiftyThree". Their icon is not of paper, but of a napkin style rendering of "53". For all intents, the drawing simulation brand name is "FiftyThree". There was a brief moment in history when people thought "I wonder if 53 wa…

And 'facebook' is original? FB's legal team has a hernia anytime someone on the web uses face or book, perhaps they should take their own advice? If it continues it might be funny for 53 to release Paper Facebook.

Maybe they should call it Facepaper.

Re: A letter from Paper (FiftyThree) to Paper (Facebook)

#108

Post by metaphorm » Mon, Feb 03, 2014, 6:21 PM UTC

xxchan wrote: post #106

metaphorm wrote: post #82

Earlier quoted context omitted.

sorry, but that's not how trademark and branding works. Perhaps you should try bringing to market a product called "Coca-Cola by Ynniv" and you can find out for yourself how this really works.

You might be surprised to learn that in the trademark law, common words like "paper" or "candy" can be used by multiple companies without them infringing on each other while "Coca-Cola" is way too specific for that.

why isn't Coca-Cola also a descriptive word? It describes the product (two important ingredients).

Re: A letter from Paper (FiftyThree) to Paper (Facebook)

#109

Post by stusmall » Mon, Feb 03, 2014, 6:23 PM UTC

shanselman wrote: post #79

Companies, even hip web 3.0 companies, need to stop taking generic common nouns and declaring them trademarks. From Surface to Paper, these names are far too easy to confuse.

I like that Microsoft even stepped on their own toes with Surface. When something comes up about it sometimes I have to clarify if its about the tablet or the "big ass table"

Re: A letter from Paper (FiftyThree) to Paper (Facebook)

#110

Post by MartinCron » Mon, Feb 03, 2014, 6:24 PM UTC

dpcheng2003 wrote: post #6

Honestly, I think we'll see more downloads of Paper (53) because of confused people looking to download Paper (FB). I see this is as a huge PR win for 53 and both will end up co-existing and succeeding (probably). There are TWO billion-dollar storage companies with Box in the name. Now that's confusing.

Don't even get me started on ABC and NBC.