Facebook Tries To Quash 'Timeline' Trademark Suit (Law360)
By Django Gold
Facebook Inc. fired back Tuesday at Timelines Inc.'s claims that the social networking giant's recently announced Timeline feature infringes its Timelines.com website, telling an Illinois federal court that the term is too generic to be protectable.
In its counterclaim, Facebook said Timelines' trademarks were merely descriptive of the company's interactive chronology website and that Facebook should therefore be allowed to go ahead with its own similarly named project.
"The term 'timelines' is merely descriptive of, or generic for, the services offered by plaintiff and thus plaintiff's trademark registrations are unenforceable and subject to cancellation," Facebook said.
"Facebook's use of the descriptive term 'timeline' for its new user interface feature is both fair and noninfringing," the counterclaim said.
In September, Facebook announced the development of a new feature on its social networking platform that would allow users to create a virtual timeline of their lives using photos, video and other illustrative devices.
One week later, Timelines filed its suit, accusing the social networking site of trademark infringement and saying the new feature would put Timelines out of business.
"This matter seeks to protect Timelines, a small company headquartered in Chicago, that has been in business for almost five years, from being rolled over and quite possibly eliminated by the unlawful action by the world's largest and most powerful social media company Facebook," the complaint said.
Timelines.com allows users to record and share personal or historic events, as well as contribute descriptions, links, photos and videos related to those events. This year, the site has averaged about 97,000 visitors per month, according to the suit.
Timelines has three registered trademarks related to its service.
But Facebook on Tuesday said Timelines' trademarks were simply descriptions of the service itself, which many other websites have offered variations on.
"Long before counterdefendant's existence and its alleged first use of 'timelines' in commerce on April 20, 2009, third parties have used the term 'timeline' to describe or identify goods and services that enable users to create and share chronologies of events in their personal lives, in history or any other subject matter of their choosing," Facebook said, pointing to Twitter and other sites that offer timeline features.
"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,'" the counterclaim said.
Facebook is seeking a declaration that it is not infringing Timelines' trademarks, as well as cancellation of the company's marks.
Following a beta testing period, Facebook announced Tuesday — the same day it filed its counterclaim — that the Timeline service is now available to New Zealand users, with the service to be gradually extended to the rest of the globe.
A Facebook representative declined to comment on Thursday. A representative for Timelines was not immediately available for comment.
Timelines is represented by Douglas Alan Albritton and James Terrence Hultquist of Reed Smith LLP.
Facebook is represented by Michael G. Rhodes, Anne H. Peck, Gavin L. Charlston, Jeffrey Thomas Norberg and Peter Joel Willsey of Cooley LLP and Jordan Mitchell Heinz, Steven Douglas McCormick and Thomas M. Monegan III of Kirkland & Ellis LLP.
The case is Timelines Inc. v. Facebook Inc., case number 1:11-cv-06867, in the U.S. District Court for the Northern District of Illinois.
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