[ynniv]

People are going to call the app by Facebook "Facebook Paper" because "Paper" is simply too generic. 53's drawing app name is not strong either. Their iOS app is not called "Paper", but "Paper by FiftyThree". Their icon is not of paper, but of a napkin style rendering of "53". For all intents, the drawing simulation brand name is "FiftyThree". There was a brief moment in history when people thought "I wonder if 53 was acquired". That time has passed, and no one will mistake them from now on.

"Facebook Paper" is an alternative interface to Facebook.

"Paper by FiftyThree" is a drawing application.

Other than that they are both software, there's little room for confusion. 53 can get upset and write a blog post about it, but there is no substantive damage done. They'll probably sell more of their own product because of this.

[Jare]

Whenever I hear the name "Paper" in a mobile / tablet context, I immediately think of 53, and I don't even have an iPad. If Facebook Paper is successful, that will no longer be the case (but it will hurt my perception of Facebook Paper in the meantime).

That said, I don't think 53 can claim any exclusive rights to the name, and I'm happy to see they haven't - they have just asked with exquisite politeness.

[ynniv]

Whenever I hear the name "Paper" in a mobile / tablet context, I immediately think of 53, and I don't even have an iPad.

If I took ten people off the street, in San Francisco itself, and asked them who made an iPhone app called "Paper" a majority would probably already tell me Facebook. Perhaps one of them would know of 53, and probably not by name. Being in the mobile software community, we know of a lot of "successful mobile apps" that are not household names. I like and use 53's Paper, but 53 is not Exxon, GE, or Facebook. My friends and family have almost certainly never heard of it. A hundred million unverified global downloads does not equal a hundred million people who remember what your poorly branded, generically named app is called. I usually think of it as "that coffee stain icon with a generic name". Honestly, 53 might do better renaming it "53". Or "Studio 53" if they wanted to skim off of another brand that probably won't fight back.

Paper by FiftyThree is a good product, but a poor choice of name, and I still can't figure out why their app icon says "53" instead of "Paper".

That said, I don't think 53 can claim any exclusive rights to the name, and I'm happy to see they haven't - they have just asked with exquisite politeness.

No. 53 needs to claim exclusivity, claim that there is no possibility of confusion, or live with the reality that if people start calling Facebook Paper just "Paper", that Facebook will legally be able to prevent 53 from using the term. With trademarks it doesn't matter who has been using it longer, only who successfully enforces it.

[malandrew]

    "If I took ten people off the street, in San Francisco 
    itself, and asked them who made an iPhone app called 
    "Paper" a majority would probably already tell me 
    Facebook."

Actually I think the majority would say "I don't know". Facebook Paper was released a few days ago, so how could the majority of people already know that Facebook makes it.

Furthermore, Facebook also has an app called Messenger and Camera•. They've been around awhile and I'd be surprised if you surveyed people that they would be able to tell you that Facebook makes either. For both, I would expect people to tell you that those are actually the generic name for any phone's build in messenging app and camera app, respectively.

TBH, I really which we'd move to a trademark system that makes all dictionary words untrademarkable. You should have to come up with an original name if you want protection and if you want the generic name you should be able to use it knowing full well that you will have no protection when doing so. Companies should not just be allowed to highjack single words like Paper, Camera, Messenger, Candy, Saga, etc. etc. etc.

[Jare]

"Paper" distribution is mostly based on a solid image of quality and friendliness, and spreads by word of mouth. A legal battle will destroy the former, and name confusion will hurt the later.

I imagine their plan has always been to enjoy the use Paper as long as they can, and rebrand when they can't anymore.

[dctoedt]

> 53 needs to claim exclusivity, claim that there is no possibility of confusion, or live with the reality that if people start calling Facebook Paper just "Paper", that Facebook will legally be able to prevent 53 from using the term. With trademarks it doesn't matter who has been using it longer, only who successfully enforces it.

That's a false trichotomy; the second and third branches are the opposite of how trademark law works. Please see my top-level comment for more details.

[ynniv]

I don't think that 53 claiming there to be no confusion would in itself hold up in court, but I think it could help to inform the public's opinion about how the marks relate to each other, which might get factored into a decision later. I do think that a few years from now, if Facebook's product is successful, it will overshadow 53's brand. While it is technically true that two established marks would be evaluated on who was first, to me it is unlikely that a small developer would win in a suit against a $60B company. The orders of magnitude larger company would aggressively argue their merits and attempt to mitigate the smaller company's. Defending the mark at a time in the future where Facebook has any standing would probably bankrupt 53.

[dctoedt]

> to me it is unlikely that a small developer would win in a suit against a $60B company. The orders of magnitude larger company would aggressively argue their merits and attempt to mitigate the smaller company's. Defending the mark at a time in the future where Facebook has any standing would probably bankrupt 53.

Keep in mind that 53 would almost certainly demand a jury trial, as (IIRC) would be their constitutional right. Jurors tend to favor the little guy; that's especially true if the little guy's lawyers can convince the jury that the big guy behaved badly or even just negligently --- and plaintiffs' trial lawyers can be extremely skilled at doing just that. Under the Seventh Amendment to the U.S. Constitution, which governs civil (non-criminal) cases, a jury's findings of fact cannot be overturned unless the judge (or an appellate court) finds that no reasonable jury could have made those findings on the basis of the evidence of record.

I imagine there are more than a few plaintiffs' lawyers with suitable expertise who would be thrilled to take 53's case on a contingent-fee basis -- not least because they'd get a lot of publicity for doing so.

One not-unlikely outcome: 53 changes its product name, and Facebook pays 53 a significant amount of money, perhaps as an investment.

[efuquen]

"People are going to call the app by Facebook "Facebook Paper" because "Paper" is simply too generic."

I don't know where you're getting this idea from, every article I've seen has had a fine time just referring to the app as 'Paper'. All the marketing material is clearly just referring to this as 'Paper', I strongly strongly doubt Facebook want's anyone to refer to the app as 'Facebook Paper'. And I certainly don't think it's too generic, I saw the original 'Paper' app being referred to as 'Paper' just fine before Facebook came out with an identically named app.

[jimwalsh]

"Windows", "Apple", aren't too generic. This is perfectly reasonable for 53 to ask this of Facebook.

[Touche]

I suggest you read up on Microsoft v Lindows before you use that example.

[nknighthb]

That case never made it past the trial court, and ended in an out-of-court settlement in which Microsoft paid a paltry sum to make the problem go away, setting no legal precedent. Furthermore, the surrounding circumstances included an injunction from a Dutch court against Lindows.

[ig1]

The term "Windows" to refer to the GUI element was in common use from the 70s (the term WIMP was coined in 1980) long before Microsoft Windows was released.

[antr]

Apple Computer vs Apple Corps (music) "co-existed" (I know of the lawsuits and agreements) at the time because one was an electronics manufacturer, and the other a record label.

Paper (53) is a drawing app, Paper (FB) is a news/FB wall magazine. Completely different markets. They should be able to co-exist.

[xerophtye]

The point isn't that they are from two different categories. The point is taht both of them are iOS apps! So the case exists.

As for Apple Computer and Apple Corps, obviously Apple never tried to be a Record label company. But when it started moving its operations into the music industry (i imagine that was the itunes time?) it got attacked by Apple corps. Before that it was peaceful co-existence. After that, it was Apple computer paying Apple Corps to keep its mouth shut and not bitch about it

[antr]

The argument that it's an "app" its like saying a company that has a "website", or a company that uses the "telephone" can't share the same name. The app, like the website or telephone is the medium to the service/product.

[fleitz]

And 'facebook' is original? FB's legal team has a hernia anytime someone on the web uses face or book, perhaps they should take their own advice?

If it continues it might be funny for 53 to release Paper Facebook.

[ynniv]

"Facebook" is also pretty generic, but when you have enough well paid lawyers these things matter less.

Also, it is very unlikely that Facebook is attempting to benefit from 53's brand. Facebook wanted to call their product something descriptive, and the names collided. Compare this to any name involving "Facebook", which likely is attempting to benefit. Outside of a directly competing service, it's unlikely that the name of a product would include the word "Facebook". This makes "Facebook" less generic and more enforceable than "Paper".

[ig1]

Facebook was completely generic. Facebook used to be term for the paperback student profile books that universities produced. Facebook the website started as an electronic version of the paper facebooks.

[ynniv]

Facebook was completely generic.

Yes, Facebook WAS generic. They would have had a difficult time enforcing their brand from the start. Once a brand becomes a household name (which is admittedly a vague metric), the rules are different. See Apple, Windows, Sun, Sharp, Digital.

[ig1]

The standard isn't "household name", but rather "acquired distinctiveness" which in the US is defined under the terms of Section 2(f) of the Trademark Act

[boomzilla]

I am going to build a real time, location based, social messaging application that's based on connection graphs and utilize the latest Flash video technology. Oh and it's going to be ephemeral.

And I am going to name it SnapYouTwitFace.

[CatMtKing]

Maybe they should call it Facepaper.

[metaphorm]

sorry, but that's not how trademark and branding works.

Perhaps you should try bringing to market a product called "Coca-Cola by Ynniv" and you can find out for yourself how this really works.

[rplnt]

Coca-Cola is not an English word describing generic real-world item. Paper is. I see your point (and to a degree agree), but your example is heavily flawed.

[xxchan]

You might be surprised to learn that in the trademark law, common words like "paper" or "candy" can be used by multiple companies without them infringing on each other while "Coca-Cola" is way too specific for that.

[metaphorm]

why isn't Coca-Cola also a descriptive word? It describes the product (two important ingredients).

[ynniv]

Because "Coca-Cola" is a "fanciful name", employing strange capitalization and hyphenation. It's also a household name world-wide, which allows protection of somewhat generic names.

[Xdes]

It's a matter of common usage. Coca-Cola isn't a universal descriptor of that particular kind of carbonated soft drink. The term for that (in the US) is a cola (which is why there exists a lot of *-Cola beverages).

The Coca leaf isn't used anymore due to the prohibition of cocaine.

[ynniv]

Not true! They don't use cocaine, but they do extract flavor from imported coca leaves, and are the only US company allowed to do so.

Randomish link from a quick search: http://dish.andrewsullivan.com/2012/02/25/coca-cola-is-still...

[yoshokatana]

I did an informal poll of my coworkers, and "facepaper" won over "Facebook Paper" and "paperbook."