On Tuesday, Facebook began to roll out their Timeline feature to users. You remember the Timeline, right? The pretty new Profile interface that is supposed to “tell your life story” through Facebook? After announcing the reportedly groundbreaking new feature at the f8 conference, it has only been available to developers until now. The lucky folks of New Zealand are the first to experience Facebook’s next big thing.
As they make this move, Facebook is also making another move in the realm of legal affairs. Facebook is countersuing Timelines.com over the use of the “Timelines” trademark.
Back in September, Timelines.com sued Facebook over the used of the “Timeline” phrase. Having trademarks for “Timeline,” the historical scrapbooking site claimed that Facebook’s use of the word would effectively drown their service in customer confusion, leading to their inevitable demise. Facebook was then limited to releasing the Timeline feature to developers. That order has since expired.
Any thoughts that this thing would result in a relatively quick settlement have been nixed with this countersuit. In the legal documents, Facebook continues their assertion that Facebook’s “Timeline” feature is not infringing on trademarks because the term is too generic. The countersuit also holds that Timelines.com should be stripped of their trademarks because they are “weak” trademarks.
Facebook argues that “timeline” is a generic term that is used in a descriptive capacity. They proceed to list upwards of ten instances where “timeline” has been used generically in the past. Facebook says that a Google search of “timeline” reveals over 196 million results. They mention the use of “timeline” by various other sites – most importantly Twitter, whose tweet stream has been called the Twitter Timeline for years.
Given the generic or at least merely descriptive nature of the term “timeline” when used to identify chronologies of events and related information (or tools for their creation), as well as the prior and widespread use of the term by third parties, Counterdefendant does not own exclusive rights in the term “timelines” as used in connection with timeline creation and collection services.
Facebook asks that Timelines.com be stripped of their trademarks, claiming that they are weak trademarks and that Timelines.com has no right to the generic phrase:
The TIMELINES Registrations have each been registered for less than five years and thus may be cancelled if the Court finds that the term “timelines” is either generic or merely descriptive of the services identified in the registrations.
Pursuant to 15 U.S.C. § 1064, the Court should order the cancellation of the TIMELINES Registrations. Further, the Court should order Counterdefendant to expressly abandon its pending TIMELINES Application and enjoin Counterdefendant from seeking the registration of any mark incorporating the term “timelines” as used in connection with Counterdefendant’s timeline creation and collection services in the future.
Facebook has a point about “timeline” being a fairly generic, descriptive term. Sites have used this word for years. But it’s kind of funny to hear this kind of argument from a company that has filed lawsuits over the words “face” and “book.”
Meanwhile, Facebook says they will continue to roll out Timeline to more areas in the near future. On Timelines.com, the company says that they are “hoping that Facebook will realize that it made a mistake and that it needs to make things right.” It appears that this legal battle is not going to end that easily.