[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.