Facebook Defeats Request to Register “Facemail” Trademark, Called “Trademark Bully”

I hope this bully doesn’t steal my lunch money like the one from school. Social media giant Facebook, Inc. won a significant victory with the Trademark Trial and Appeal Board (TTAB) in its opposition to Think Computer Corporation’s application for registration of the trademark “FACEMAIL” for “E-mail data services; Providing e-mail and instant messaging services; Providing e-mail services; Secure e-mail services,” convincing the TTAB to refuse Think’s application.Like
According to Facebook, if Think’s application were granted, it would result in a likelihood of confusion and dilution of Facebook’s registered trademarks.  In response, Think asserted certain affirmative defenses, including that “opposer is a well-known ‘trademark bully.’”
Upon review of the record, which included a survey performed by Facebook, the TTAB decided in favor of Facebook. First, the TTAB found that the “FACEBOOK” trademark is famous and, as such, is well-known to the general public and social network users. Second, the TTAB found that because their respective services are in part identical, they move in the same channels of trade and are sold to the same classes of consumers. Third, the TTAB concluded that the dominant portion of the trademarks is “Face” and that people are likely to refer to Facebook’s email and instant messaging as “FaceMail.” Finally, a comparison of the marks in their entireties, considering appearance, sound, connotation and commercial impression, convinced the TTAB that the marks are more similar than dissimilar.
With respect to Think’s affirmative defenses, the TTAB rejected them all, noting that Think presented no evidence to support their “trademark bully” accusation. No truth to the rumor that Facebook gave Think a wedgie after the decision was rendered.