Facebook, Inc. v. Teachbook. Com LLC
819 F. Supp. 2d 764
N.D. Ill.2011Background
- Facebook, a Delaware corporation, sues Teachbook.com LLC for trademark infringement, dilution, false designation of origin, and related claims arising from the TEACHBOOK mark and alleged similarity to Facebook's FACEBOOK marks.
- Teachbook moves to dismiss under Rule 12(b)(6); the court denies the motion in whole, allowing most claims to proceed.
- Facebook alleges its FACEBOOK mark is famous and registered; Teachbook adopts TEACHBOOK for a teachers' social-networking service, creating alleged similarity and potential confusion.
- Teachbook submitted over 300 pages of exhibits; the court must decide whether to consider them on a motion to dismiss (judicial notice and incorporation by reference).
- The court declines to take judicial notice of the external exhibits (EU filing, USPTO records, dictionary definitions) and declines to convert the motion to summary judgment; only Facebook's complaint and its accompanying exhibits are considered.
- The court applies the Rule 12(b)(6) standard (Twombly/Iqbal) to evaluate whether the pleaded facts plausibly state a claim.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Is TEACHBOOK generic and unprotectable as a mark? | Facebook contends the mark as a whole is distinctive; suffix-BOOK is not dispositive. | Teachbook argues -BOOK is generic and unprotectable, warranting dismissal of infringement claim. | Not dismissed at this stage; Facebook plausibly alleges protectable rights in the composite mark. |
| Are Facebook's likelihood-of-confusion allegations plausible? | Facebook asserts strong similarity in appearance and sound, related services, and market overlap; actual confusion not required at this stage. | Teachbook argues insufficient similarity and lack of support for confusion. | Facebook adequately pleaded likelihood of confusion; four of seven AutoZone factors support plausibility; Count I survives. |
| Does Facebook state a viable trademark dilution claim? | Facebook contends TEACHBOOK dilutes the famous FACEBOOK marks and weakens their association. | Teachbook argues dilution requires substantial similarity or different standard for dilution. | Facebook states a plausible dilution claim; Count II survives. |
| Can the court consider Teachbook's exhibits on a 12(b)(6) motion? | Facebook argues exhibits referenced in the complaint may be considered if properly incorporated. | Teachbook seeks judicial notice of documents and wants to rely on them to defeat claims. | Exhibits are not proper for judicial notice or incorporation at this stage; motion to dismiss remains 12(b)(6) ruling based on complaint. |
Key Cases Cited
- Tellabs, Inc. v. Makor Issues & Rights, Ltd., 551 U.S. 308 (U.S. 2007) (court may consider documents incorporated by reference or judicially noticed materials on 12(b)(6))
- Gibson v. City of Chi., 910 F.2d 1510 (7th Cir.1990) (12(b)(6) standard focuses on sufficiency of allegations)
- Twombly, 550 U.S. 544 (U.S. 2007) (plausibility standard for pleaded claims)
- Iqbal, 556 U.S. 662 (U.S. 2009) (clarifies plausibility standard and context-specific inquiry)
- AutoZone, Inc. v. Strick, 543 F.3d 923 (7th Cir.2008) (multifactor test for likelihood of confusion; emphasis on similarity, actual confusion, intent)
- Barbecue Marx, Inc. v. 551 Ogden, Inc., 235 F.3d 1041 (7th Cir.2000) (seven-factor test for likelihood of confusion)
- Spraying Sys., Co. v. Delavan, Inc., 975 F.2d 387 (7th Cir.1992) (descriptive nature of mark components and secondary meaning considerations)
- Top Tobacco, L.P. v. North Atlantic Operating Co., 509 F.3d 380 (7th Cir.2007) (illustrates when common word components are not distinctive in a niche)
- Le Book Publishing, Inc. v. Black Book Photography, Inc., 418 F. Supp. 2d 305 (S.D.N.Y.2005) (example of suffix component being unregistrable in a similar context)