FiftyThree Files Trademark Application for “Paper”

Following the release of Facebook’s new Paper news reader app for iOS, design-focused startup FiftyThree, makers of the popular iPad drawing app Paper, called out Facebook publicly for using their brand name. Facebook however declined to change the name of their new app as a result of which, FiftyThree has now filed a trademark application for the term “Paper” with the USPTO (via TechCrunch).

Paper vs paper

The source notes that FiftyThree’s only trademark in the USPTO is for “Paper by FiftyThree”, which is why Facebook used the name Paper. The startup’s CEO and co-founder George Petschnigg said that FiftyThree is “keeping its options open”. He also said in an interview yesterday that they had applied for the “Paper” trademark, on its own, alongside its already-approved “Paper by FiftyThree”. This morning, the trademark application for “Paper” went live in the system, showing that FiftyThree filed for the application the same day that Facebook publicly revealed its own Paper app.

If FiftyThree chooses to move forward legally, the company has a case, according to trademark lawyers Roberto Ledesma and Victor Cardona.

Trademarks, to a degree, 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.” Obviously, applying for and winning trademarks makes those rights even stronger, which FiftyThree has done. But nothing is a sure thing, especially considering how subjective trademark law is.

Too bad for FiftyThree, Facebook has the resources to wear down a smaller company who can’t afford a lengthy and expensive legal battle.

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  • Al

    This is ridiculous. You can’t trademark “paper”. Their application will get thrown out.

  • WatDah

    I agree, but wasn’t “candy” trademarked just a few weeks ago? Man, this is getting outta control.

  • Al

    I could be wrong, but I think “candy” was just trademarked in the UK. It wouldn’t surprise me if that get’s re-evaluated.

    The US and Canadian trade-mark laws require you to stipulate in the trademark documentation that you won’t use, or claim as also being your trademark, any common words that may be a part of the trademark. Essentially, you can’t have a single word trademark unless it’s a unique (made up) word – or a unique spelling of an existing word.

  • websnap

    Why? How is it ridiculous to want to protect the name of a product in a specific field? They aren’t looking to own the word “paper” in all uses, but specifically in the app space as they have built a brand.

    A slum-dunk win, I don’t know… but I think it’s far from ridiculous. Everyone I spoke to personally and quite a few from The Verge’s comments section actually though Facebook bought FiftyThree’s app up until they read more into it. That alone makes me thing there is a branding contention. Just because it’s a common word doesn’t mean a brand can’t be build in a specific field with it. Try starting a magazine called Time.

  • Al

    You can’t trademark a common word because the person who trademarks it can then suit everyone who uses the word, and it could also restrict the use of that word if used within any other trademark.

    Its intended use is irrelevant with regard to whether or not you can use a common word (at least in Can/US). The only time “use” comes into play is when a trademark is use-specific.

    As far as I know, “Time” is not trademarked. “TIME” in upper case “Times New Roman”(?) font is a trademarked logo of Time Inc.

  • http://www.ryantoyota.com/ Ryan

    Not sure if Time is or not, but I know Apple is. There was a big lawsuit battle when they started to expand into music more as it infringed upon The Beatles’ Apple Corps record company. They ended up coming to a settlement where Apple would own all of the trademarks related to “Apple” and license certain trademarks back to Apple Corps for their continued use.

    So in that instance, a common work is definitely trademarked, at least within their specific industry.

  • websnap

    / This

  • Al

    To my knowledge, Apple is a word mark, not a trademark.

  • http://www.ryantoyota.com/ Ryan

    Here’s another interesting story related to this situation. Seems the name stealing might be a bit of karma: http://figure53.com/notes/2014-02-04-david-and-goliath/

  • http://www.ryantoyota.com/ Ryan

    This is getting a little confusing. I always thought that “trademark” referred to the registered name and “wordmark” referred to the graphic stylization of that name. I know you can also trademark a graphic, as well, so it’s definitely more complex than that, but bottom line, I thought the trademark could apply to the name itself.

    The USPTO website states this in their FAQ: “What is a trademark? A trademark is a word, phrase, symbol or design, or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others.” So a trademark CAN be a just word.

    Apple ends all of their press releases with: “Apple, the Apple logo, Mac, Mac OS and Macintosh are trademarks of Apple. Other company and product names may be trademarks of their respective owners.”
    There are no logos used in the text of press releases, and they specifically list “Apple” and “the Apple logo” as separate items in the list, which makes it sound like the trademark applies to both the logo as well as the actual name in this case.

  • http://www.ryantoyota.com/ Ryan

    Also, I really don’t think that reference is just a generalization. The word Apple appears in a column under the heading “Trademarks” and it has the ® symbol following it. According to the USPTO FAQ page: “The “®” symbol indicates that you have federally registered your trademark with the United States Patent and Trademark Office.”

  • http://www.ryantoyota.com/ Ryan

    Heh. Sorry for all the extra comments. Just found this post. I think it answers most of our questions: http://secureyourtrademark.com/can-you-trademark/common-words-phrases/

    Sounds like Apple and Time are indeed both trademarks (in their respective markets), however, it also gives a reason for why they may indeed deny a request for trademarking the name “paper” as they could deem it too common a word for that market.