Is this a case of a monolithic corporation beating down on a smallish rival? Facebook's Paper app was announced last Thursday and appeared in the App Store on Monday. Unfortunately for confused end users, as BITS noted, a small Seattle- and New York-based start-up, FiftyThree, is not too happy about Facebook’s new app, as it has had software named Paper in the App Store for quite some time.
To be clear, the full names of the apps differ. Facebook's is called "Paper – stories from Facebook." FiftyThree's app is called "Paper by FiftyThree."
That could be an issue in any upcoming legal battle. FiftyThree does own a trademark, but the trademark owned by FiftyThree is “Paper by FiftyThree,” which was filed for in May of 2012, and approved in December of the same year.
Trademark lawyer Victor Cardona confirmed to TechCrunch that no one owns the generic trademark of "Paper." In fact, it's been theorized that FiftyThree applied for the longer term so that it could get the generic term "paper" through the process.
However, both Cardona and trademark lawyer and expert Roberto Ledesma believe that FiftyThree might have a valid infringement case against Facebook.
Cardona also added that in certain situations, trademarks are use-based. This means that “just by using a mark in a particular field, you’ve got rights,” said Cardona. “Some are state-based and some are federal-based, but if I start using a mark before you in the same area of goods or services, I’ve got rights to the mark over you.”
It really will come down to how many third-party Paper marks are out there in this industry, and whether or not FiftyThree’s mark has been made weaker by other third-party marks. But Facebook should know better than to do this.
Paper has a pedigree, as well. It was so popular in 2012 that Apple named it the Best App of the Year. The app has also been honored with awards from AIGA, IxDA, Communication Arts and TIME magazine.
What Facebook should do, theough, may be ameliorated by the fact that Facebook has a huge pocketbook and a large legal department. FiftyThree, not so much.
In a phone interview, Georg Petschnigg, co-founder and chief executive of FiftyThree said he was going to wait to see how Facebook responded on Monday to decide what FiftyThree would do next. This story isn't over by any means.