Timelines had a registration for “Timelines” for web-based services involving tracking events. Facebook decided to use “Timeline” as the centerpiece of its new strategy:
In advance of Defendant’s development conference . . . to be held in September 2011, Zuckerberg stated Defendant “decided to focus in two places: all the stuff we want to do (products), and also wanted to punch anyone who tried to compete with us in the face really hard. You have to teach people who compete with you ‘don’t even fucking bother.’”
(1) Timeline. This is the most important brand. It describes the entirety of the new product we’re rolling out and not just the main tab itself. Timeline will also replace the word “profile” across the whole product as the brand/word describing this product. From now on, rather thanediting your profile, you edit or update your timeline.
Once this litigation started, Facebook ran a Teflon phone survey: 68 percent of respondents expressed a belief that the term “timeline” was generic (not a brand) when asked whether “timeline” was a common name or a brand name, while 24% thought it was a brand. The court found that survey not enough to justify summary judgment for Facebook, nor were plaintiff’s own multiple generic uses of the term (which it removed once this litigation began), nor were dictionary definitions, nor were other companies’ uses of the term--not even in combination.
Also, Facebook didn’t show that the Timelines mark lacked secondary meaning: Timelines had “more than nominal sales and over one-thousand active users on its website, Timelines.com. At this stage in the proceedings, it is not unreasonable to conclude that as to this group of users, ‘timeline(s)’ had acquired a specific meaning associated with Plaintiff.” (How many cases have found secondary meaning based on a thousand customers?)
Facebook’s descriptive fair use defense was also unresolvable on summary judgment. There was evidence that it intended to use “Timeline” as a mark, and genuine issues also remained on its good faith, since it was aware of plaintiff’s registered marks; see “punch in the face” comment above. (How many plaintiffs’ attorneys will be using that remark in years to come, I wonder?)
Comment: Given the rather serious evidence of genericity, which outstrips that in most of the genericity cases I’ve seen, it’s hard not to think the court is being nice to David because Goliath tried to capture a generic term, which is now coming back to haunt it.