A judge has ruled Facebook must go to court over a trademark infringement lawsuit over its ‘timeline’ feature.
Since Facebook failed to show the trademark was generic or descriptive the case will now be taken to court before a jury.
Timeline Inc., which runs Timelines.com, a website that collaboratively records and shares history, filed a complaint against Facebook in September 2011 and attempted to get a restraining order to bar the social network from offering its timeline service. However, this was denied.
The company launched its Timelines.com website in 2009 and owns U.S. federal trademark registration numbers for ‘Timelines’, ‘Timelines.com’ and for its ‘Timelines’ design mark.
Facebook counter-sued against Timeline Inc., claiming its registered marks were not distinctive enough to warrant protection and asked for judgments of non-infringement and a cancellation of the registrations
District judge John W. Darrah noted the term timeline was being used generically by other companies to Facebook, but Timeline Inc. said these organizations were using it differently. Because the goods and services being offered by these other firms are software based and not web-based, Timeline Inc. does not wish to pursue legal action against them.
Facebook has admitted being aware of the plaintiff before moving forwards with its timeline feature in October 2010 but said it thought the term would help Timeline Inc. in its search engine optimization strategies.
Timeline has now become compulsory for all Facebook users after it rolled out in September 2011.
The company wants the timeline term to be placed under fair use so it cannot be liable for infringement. It believes the term is a generic or descriptive term, but has failed to show sufficient evidence of this.
Douglas Albritton, an attorney for Timelines Inc., told The Daily Telegraph in a phone interview his client is seeking damages equivalent to the ad revenue Facebook has generated with its timeline feature.
Mr. Darrah said Timelines Inc. had more than nominal sales, with over a thousand active users. The jury trial is now set for April 22nd.