By way of explanation...

I filed a number of trademark applications around Think's FACECASH registered trademark just in case Think ended up expanding into other fields. One of them was FACEMAIL. Facebook filed an opposition despite our "settlement" agreement.

Facebook argued that it was confusing. I argued that the market is full of confusion: for example, Apple owns FACETIME, a software product that overlaps completely with Facebook's market. At the hearing, I also pointed out two more "confusing" eight-letter same-four-letter-prefix marks that everyone knows: STAR TREK and STAR WARS. Facebook paid a consultant $120,000 to create a survey that ignored the state of the market and asked people what company they thought made a product called FACEMAIL. Only 36.2% chose Facebook, Inc.

Throughout the multi-year process, Facebook's lawyers refused to respond to typical phone calls and e-mails. I filed a motion for sanctions, which was granted in part here. They also redacted just about everything that suggested I existed, so I filed a motion to counter that, which was also granted in part.

In the end, the Board concluded that the two marks were likely to confuse consumers--completely ignoring the state of the market, and the fact that the increase in digital video technology especially leads to more uses of faces in computing--and argued that because FACEBOOK is famous, and because FACE is an important part of FACEBOOK, Facebook can stop the registration of any FACE- mark that could be argued to be related to anything Facebook does.

I also pointed out that Facebook always uses the same shade of blue and the same font to emphasize its design mark, and that FACEMAIL would not be used in the same manner, so it would not be confusing. One of the judges on the panel countered that I "might" do that in the future, though. So suddenly we were discussing (in a civil context) pre-crime: whether I should be restrained broadly from doing something narrow I specifically planned not to do.

Facebook's internal counsel admitted at the hearing that their standard naming scheme is "FACEBOOK X" where X is some feature, but then made it try to sound like Facebook, Inc. has some features with the FACE- prefix, which it does not. In fact, she was referring to one app on the effectively-defunct Facebook Platform, which is not made by Facebook, Inc.

Thankfully the Board completely ignored Facebook's even-more-draconian argument that FACEMAIL would cause "trademark dilution," a new phenomenon invented by Congress at the behest of enormous corporations. The law is so insane (especially since it was amended) that the Board tries to ignore it out of existence, rarely ruling upon dilution issues.

I pointed out (in writing, in the record, with a printout from harvard.edu and by waving the paper version I had from 2003 at them) that Harvard and other universities have used FACEBOOK for decades, making it a generic term that offers zero protection in the view of the appellate courts. To that, the Board said, "applicant’s argument that 'The Facebook' is the name of an electronic directory of Harvard University students is not supported by any testimony or evidence."

Right.