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).
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.