Saving FACE – a step closer to trade mark registration for Facebook

Facebook has once again (see previous posts here and here) found its way into the IP spotlight, following the issue of a Notice of Allowance by the US Patents and Trademarks Office in respect of Facebook’s trade mark application for “FACE”.

Considering how ‘descriptive’ or ‘generic’ FACE is, some of you may be surprised by this.  After all, shouldn’t the word remain available for other traders to use to describe their goods or services without risking trade mark infringement?

Well, it is important to view the application in context.  Facebook has sought protection for FACE in a relatively narrow context, being:

Telecommunication services, namely, providing online chat rooms and electronic bulletin boards for transmission of messages among computer users in the field of general interest and concerning social and entertainment subject matter, none primarily featuring or relating to motoring or to cars.

In these circumstances, the word “face” doesn’t describe the goods or services to which the mark sought by Facebook is to be applied.  Therefore, FACE may be capable of distinguishing Facebook’s goods or services from those of other traders.  An attempt to register “face” in respect of make up, for example, would beg a different analysis.

Potential registration is also subject to Facebook using the mark and filing a Statement of Use within six months of the Notice of Allowance, unless an extension is sought.

Facebook’s application for FACE is in good company – a search of the USPTO database demonstrates a range of other trade mark applications/registrations by Facebook.  A favourite of ours is Facebook’s registration of the word WALL for various computer related classes.  Other honourable mentions are Facebook’s multiple applications in respect of “LIKE”, and an application for “POKE”.

With trade mark applications such as these on foot it seems clear that the Facebook juggernaut will continue to gain momentum, and reinforces to potential competitors how fervent Facebook may be in protecting its reputation in a range of components of its Facebook “brand”. 


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