Facebook Says Rival's 'Timelines' Mark Is Too Generic (Law360)

Facebook Inc. urged an Illinois federal judge Thursday to quash a trademark suit brought by Timelines Inc. that alleges its timeline feature is infringing the company's "timelines" mark, arguing the term is too generic to warrant protection.

In its move for summary judgment, Facebook argued that while Timelines owns three U.S. registrations for the "timelines" mark in connection with app service provider and website hosting services, those registrations only create a contestable presumption of validity of the mark in connection with those services.

Facebook contended that the term's appearance in numerous dictionaries provides "powerful evidence" that the term is generic, since nouns in dictionaries, besides the occasional proper noun, denote kinds of entities as opposed to specific ones.

Since the word "timeline" is defined as "an arrangement of events or other information in chronological order," and given that Timelines uses the term to refer to services that lets its users record details of events and connect them to other related events, its alleged mark is nothing more than a generic name for its services, according to Facebook.

Timelines operates timelines.com, which allows its users to design and share virtual representations of personal or historic events, as well as contribute descriptions, links, photos and videos related to those events.

In September 2011, Facebook announced the development of a new feature on its social networking platform that would allow users to create a virtual timeline of their lives using photos, video and other illustrative devices.

One week later, Timelines filed its suit, accusing the social networking site of trademark infringement and saying the new feature would put it out of business.

Facebook argued Thursday that Timelines itself uses its alleged mark generically, by deploying the word to describe services offered on its websites and for its Timelines SE service it provides to third parties.

Widespread use of the term by Timelines' competitors also demonstrates its genericness, Facebook said, pointing out that other companies have used the word "timeline(s)" to name and describe products and services that allow users to share chronologies of events.

The most glaring example is Facebook rival Twitter Inc., which has been using the term since 2006 to refer to its "Timeline" feature that allows users to review a "collected stream of posts listed in real-time chronological order," according to Facebook.

"The vast majority of these third party uses of 'timeline(s)' predate plaintiff's first use of 'timelines' in 2009," Facebook said.

There is also widespread use of the word "timeline" in the news media, who regularly use the term in the title for articles that list events in chronological order, such as the Chicago Tribune's article titled "Timeline-U.S. policy shifts on Syria in Obama administration," or CNNMoney's piece called "Timeline-Gulf of Mexico oil spill," according to Facebook.

Even if the term wasn't generic, Facebook argued that the purported mark is merely descriptive of Timelines' services, and as such it can't function as a trademark until the term has acquired secondary meaning.

Facebook added that it doesn't use the word as a trademark, since the term doesn't point to the origin or source of Facebook's services, which is instead identified by its distinctive Facebook mark and associated trade dress.

Facebook spokesman Andrew Noyes declined to comment. Representatives for Timelines could not be immediately reached for comment on Friday.

Timelines is asking that Facebook be permanently enjoined from using any version or similarly-named version of its marks, and for damages. In a counterclaim, Facebook is seeking a declaration that it is not infringing Timelines' trademarks, as well as cancellation of the company's marks.

Timelines is represented by James T. Hultquist, Douglas A. Albritton and Raven Moore of Reed Smith LLP.

Facebook is represented by Peter J. Willsey, Brendan Hughes and Michael G. Rhodes of Cooley LLP.

The case is Timelines Inc. v. Facebook Inc., case number 1:11-cv-06867, in the U.S. District Court for the Northern District of Illinois.

--Additional reporting by Keith Goldberg. Editing by Andrew Park.

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Related Contacts
Michael Rhodes Partner, San Francisco
Brendan Hughes Partner, Washington, DC