Facepets.com, LLC v. Facebook, Inc.

Filing 1

COMPLAINT against Facebook, Inc. (Filing fee $ 400), filed by Facepets.com, LLC. (Attachments: # 1 Exhibit 1 - Trademark docs, # 2 Exhibit 2 - Notice of Publication, # 3 Exhibit 3 - Correspondence, # 4 Exhibit 4 - Service Mark Principal Register, # 5 Exhibit 5 - Extension Request, # 6 Civil Cover Sheet, # 7 Summons, # 8 Receipt)(tmw)

Exhibit 3

Lori F. Mayall
[phone]
[e-mail]

VIA EMAIL <[e-mail]>

December 3, 2013
Paul W. Kruse
Bone McAllester Norton PLLC
511 Union Street, Ste. 1600
Nashville, TN 37219-1780
RE:

Facepets
85/894,240)

United States Trademark Application for FACEPETS (Ser. No.

Dear Mr. Kruse:
We represent Facebook, Inc. You and your client Facepets.com, LLC are undoubtedly familiar with
Facebook and its world-famous social network. We recently discovered your
U.S. trademark
application for FACEPETS covering
an on-line community for registered users to participate
in discussion, get feedback from their peers, form virtual communities, and engage in social networking
featuring their pets; providing a website featuring technology enabling users to upload, view and
download digital photos featuring their pets.
Facebook owns exclusive rights to the FACEBOOK mark, including rights secured through common
law use and registration in the United States (Reg. Nos. 3,041,791, 3,122,052, and 3,734,637, among
many others) and internationally. Facebook has over one billion active users worldwide and a
frequently, if not daily, referenced in the media and pop culture. The FACEBOOK mark is one of the
See Facebook, Inc. v. Think Computer Corporation (Opposition No. 91198355), available at
http://ttabvue.uspto.gov/ttabvue/ttabvue-91198355-OPP-64.pdf (finding the fame of the FACEBOOK
mark
well as to users of social networking services
). In
order to protect the goodwill and fame of the FACEBOOK mark, Facebook vigorously protects its
trademarks and diligently polices against the use and attempted registration of marks that cause
consumer confusion as to affiliation with or sponsorship by Facebook and dilute the distinctiveness of
.
While Facebook respects and welcomes the efforts of others to facilitate online connections and
develop online networks and communities, various third parties around the world have attempted to
FACEBOOK brand. For example, many third parties attempt to adopt marks that combine a generic
word with the FACE prefix or the
niche online social networks and communities. Typically, the generic term describes a characteristic of
the type of network/community or the targeted clientele and does nothing to distinguish these marks
from the FACEBOOK mark. Your client s FACEPETS mark appears to follow this pattern. The word
s describes the type of online community your client intends to offer under the FACEPETS mark.
As a result, Facebook is concerned that when consumers encounter your client s website and services,

Mr. Kruse
December 3, 2013
Page Two
they will likely to be confused as to whether your client s services are sponsored by, associated with, or
endorsed by Facebook, and that your client s use of the FACEPETS mark will dilute the fame of the
FACEBOOK mark.
As a responsible brand owner, Facebook must take action to stop these misuses of its intellectual
property. Due to this risk of consumer confusion and dilution, we must ask that your client immediately
expressly abandon its FACEPETS application, and either (1) select a new mark to use in connection
with its planned online community featuring pets that does not use FACE, BOOK, or any other
component that is confusingly similar to or dilutive of FACEBOOK, or (2) use the FACEPETS mark for
services that are not related social networking or online communities. It will also be necessary for your
client to cease all use of the FACEPETS name, including the facepets.com domain name and any
similar domains. I urge you to provide your written assurance that your client has complied with the
terms set forth above no later than December 17, 2013.
Facebook is of course prepared to act as necessary to protect its intellectual property rights. If
possible, however, Facebook would prefer to resolve this matter amicably. This letter is without
prejudice to any rights and remedies of Facebook, all of which are expressly reserved.
Sincerely,
Cooley, LLP

Lori F. Mayall
cc: Anne Peck, Esq.