Guest post by (recently sworn-in attorney and former Erik M. Pelton & Associates intern) W. Reid Morris:
Social media websites are a dime a dozen these days. A lot of them include imbedded links that allow users to quickly share an article, product, or image on your preferred social media platform. While some websites imbed only a few of the most familiar channels for sharing their content, others provide hundreds of different social media channels for sharing content. I came across one site which provided 328 different options for sharing the site’s content on various social media platforms that span the globe, with everything from AmenMe! and Baang to Yuuby and ZingMe.
There are the platforms that most Americans have heard of like Facebook, Twitter, and Pintrest which allow you to “Like”, “Tweet”, or “Pin It” when you find something that interests you. Of course, there are other options like Tumblr and Reddit where you can share your finds with the respective online communities. These social media sites share some similar features while striving to deliver things a little bit differently in an effort to distinguish themselves and gain market share. One feature that they all share is strong brands built around great trademarks and brand names.
Last month, Facebook lawyers filed a response to a trademark infringement suit filed in the US District Court for the Eastern District of Michigan by an undoubtedly smaller social media competitor, Want, as found at wantbutton.com. It seems that Want’s service is naturally based around a “Want” button, and Facebook recently tested a new feature allowing their users to “Want” something by clicking a link. This service goes in addition to the existing actions Facebook let users digitally engage in like “Share”, “Comment”, “Like”, or “Promote”.
[a “Want” button from wantbutton.com]
Want’s complaint included information about a number of federal trademark registrations that the company owns for the term WANT. Facebook’s response to the claims made by Want in relation to their registered trademarks was that Want does not own any rights in the term “want.” How could this be if Want has valid federal trademark registrations for WANT?
I am of the opinion that the lawyers at Facebook are not too worried about this one because Want is skating on pretty thin ice with their registered trademarks. For Want’s registered trademarks to do them any good in court, the court will have to find that 1) that the registrations cover the type of use that Want claims Facebook infringed, and 2) Facebook did, in fact, infringe on the mark in their use of their own “Want” button.
Unfortunately, Want has built their brand, as it currently appears to exist, around a terrible trademark. Want must have been either swinging for the infield when they went about developing their brand or they failed to consult a trademark attorney. In terms of the way that social media operates, a “Want” button, is extremely descriptive of the function it performs. To try to build a brand around an unquestionably descriptive and arguably generic term is almost always going to be bad for business.
The lesson to take away is that one of the keys to building a strong brand in a national and often global marketplace is having a unique and identifiable brand name that you can exclusively own. The best way to go about doing this is to consult a licensed trademark attorney who can help you identify, develop, and protect your brand name so that you can be on the path to becoming the next Facebook®.
[Editor’s note: Facebook has itself registered “Like” as a trademark for a feature that allows users to share the fact that they like something online, which makes it ironic that part of Facebook’s defense against “Want” is to note just how prevalent the term is.