In both cancellation petitions (here and here), Think Computer claimed 1) priority of use (using the marks “FACEBOOK,” “FACE BOOK,” “UNIVERSAL FACE BOOK,” and “FACENET” at least as early as September 19, 2003 in connection with “on-line information services featuring information regarding, and in the nature of, collegiate life, classifieds, virtual communities and social networking)”; 2) genericness (the terms “FACEBOOK” and “FACE BOOK” have been used for decades to describe books displaying faces of students or other individuals); and 3) fraud on the PTO.
Regarding the allegations of fraud, Think Computer claimed that Facebook’s initial application declaration or “no other person. . . has the right to use the mark” was false because the Facebook founders were aware of Think Computer’s use of the Facebook mark. Interestingly, the fraud allegations also make reference to Facebook’s Petition to Make Special (under T.M.E.P. §1710) its two pending FACEBOOK applications in order to expedite their examinations. Facebook filed its petitions because it was in the midst of litigation with ConnectU, which had threatened a bidding war over the facebook.com domain name. Think Computer alleged that the rushed examination allowed Facebook to rush through its applications, and thereby preventing the PTO from considering a possible genericness refusal or other similar marks that had been used in the marketplace.
Of course, like so many trademark disputes, the veracity of Think Computer’s allegations will never be tried as the parties announced that all outstanding claims between the parties, including the issue regarding the FACEBOOK trademarks, have been amicably resolved.