MEMORANDUM OPINION AND ORDER
Plaintiff Facebook, Inc. (“Facebook”) has filed an eight-count complaint against Defendant Teachbook.com LLC (“Teach-book”) alleging trademark infringement, trademark dilution, and related federal and state claims. (Compl.) Teachbook moves to dismiss the complaint for failure to state a claim upon which relief can be granted. (Mot. & Mem.) Teachbook’s motion is denied.
I. BACKGROUND
As is always the case with motions to dismiss under Rule 12(b)(6), we look to the complaint and any supporting exhibits for the facts upon which to evaluate the motion. In this case, Facebook has filed a fifteen-page complaint and five accompanying exhibits. Normally at this stage, these materials would provide the sum total of the relevant facts for evaluating Teach-book’s motion to dismiss. But in support of its motion to dismiss, Teachbook has proffered over 300 pages of additional material that it would like us to consider. Thus, after first setting out the allegations Facebook makes in its complaint and supporting exhibits, we then determine whether Teachbook’s additional material ought to be considered in evaluating the current motion.
A. Facebook’s Complaint
Facebook is a Delaware corporation with its principal place of business in Palo Alto, California. (Compl. ¶ 1.) Since its founding in 2004, Facebook has risen to prominence through its provision of a social networking website and related services. (Id. ¶¶ 6, 10-11.) Teachbook is a Delaware limited liability company with its principal place of business in Northbrook, Illinois. (Id. ¶ 2.) Teachbook maintains a social networking website targeted specifically at teachers. (Id. ¶ 12.)
Facebook is suing Teachbook for infringement of Facebook’s claimed statutory and common law trademark rights in “FACEBOOK” and related marks. (Id. ¶¶ 7-8, 24-74.) Facebook has been continuously using the FACEBOOK mark since February 2004 and now owns multiple United States Patent and Trademark Office (“USPTO”) registrations for it. (Id. ¶¶ 6-8 & Ex. A.) Facebook alleges that, “as a result of the nature and quality of Facebook’s services, its widespread use of the FACEBOOK Marks, Facebook’s enormous and loyal use base, its numerous trademark registrations and pending applications, and other factors, the FACE-BOOK Marks are famous[.]” (Id. ¶ 10.)
Facebook accuses Teachbook of trading on the fame the FACEBOOK mark has achieved. (Id. ¶ 28.) According to the complaint, Teachbook’s website has contained the following statement at various times:
Many schools forbid their teachers to maintain Facebook and MySpace accounts because of the danger that students might learn personal information about their teachers. With Teachbook, you can manage your profile so that only other teachers and/or school administrators can see your personal information, blogs, posts, and so on. Teachbook is all about community, utility, and communication for teachers.
(Id. ¶ 13.) Based on this statement, Face-book contends that Teachbook is touting itself as a “substitute for Facebook.” (Id.)
Although Teachbook applied to register its “TEACHBOOK” mark with the USP-TO on an intent-to-use basis on March 16, 2009, Facebook has opposed this application. (Id. ¶ 14.) Facebook asserts that the TEACHBOOK mark is substantially similar to its FACEBOOK mark. (Id. ¶ 15.) Facebook further claims that the services Teachbook offers under the TEACHBOOK mark “are the same as and/or related to some of the services provided by Facebook.” (Id. ¶ 16.) In Face-book’s view, Teachbook’s use of the TEACHBOOK mark also “creates a false suggestion of an affiliation or connection between [Teachbook] and Facebook, where none exists.” (Id. ¶ 17.) Notably, Face-book contends that Teachbook “adopted its TEACHBOOK Mark with the intention of causing confusion with, and trading on the goodwill of, the FACEBOOK Marks.” (Id. ¶ 18.)
Based on these allegations, Facebook initially filed suit against Teachbook in the Northern District of California on August 18, 2010. (Id. ¶20.) That case was dismissed for lack of personal jurisdiction over Teachbook, however, on May 3, 2011. (Id. ¶ 22.) Facebook subsequently filed this suit against Teachbook here in the Northern District of Illinois on May 6, 2011. (Dkt. No. 1.)
B. Teachbook’s Exhibits
In addition to these allegations in Face-book’s complaint, which we accept as true, Teachbook has offered over 300 pages of exhibits in support of its motion to dismiss. Teachbook claims that these materials are all either referenced in Facebook’s complaint or public records subject to judicial notice. (Mem. at 5-6.) Thus, we must address the threshold issue of whether these materials are properly considered in conjunction with Teachbook’s motion to dismiss.
In addition to the allegations in the complaint, courts are free to examine “documents incorporated into the complaint by reference, and matters of which a court may take judicial notice” in evaluating a motion to dismiss under Rule 12(b)(6).
Tellabs, Inc. v. Makor Issues & Rights, Ltd.,
The question here, then, is whether the materials Teachbook has presented are either “incorporated into the complaint by reference” or subject to “judicial notice.”
Tellabs,
1. Judicial Notice
Seven of Teachbook’s ten exhibits are materials that it contends are subject to judicial notice. These exhibits consist of a filing Facebook made with the European trademark authority (Mem., Ex. B.); USP-TO records pertaining to trademark registrations belonging to Facebook and others (Id., Exs. C-G); and dictionary definitions (Id., Ex. H.). Regarding Facebook’s European filing and the USPTO records, Teachbook maintains that these documents are “matters of public record” of which we can take judicial notice. (Mem. at 5.) Teachbook also cites Seventh Circuit authority for the consideration of dictionary definitions in trademark cases. (Id. at 6.) Teachbook relies on these documents to argue that “Facebook has judicially admitted facts which undercut its entire complaint” and that Facebook cannot rely on the suffix “-BOOK” to maintain its trademark claim against Teachbook. (Mem. at 9-13.)
Teachbook places particular emphasis on Facebook’s filing with the European trademark authority. (Mem. at 9-11.) In that filing, Facebook was replying to objections raised by a Spanish holder of the trademark “FACTBOOK” to Facebook’s attempt to register “FACEBOOK” as a trademark. (Mem., Ex. B. at 1.) Facebook argued that “the aural and conceptual differences between the marks counteract any existing similarity” between them, and, as such, “likelihood of confusion ... can be clearly excluded.” (Id. at 6.) Teachbook urges that this statement and others made in the same document are fatal to Facebook’s complaint in this case. (Id. at 9.)
Facebook responds that “the evidentiary value of Teachbook’s proffered documents are subject to reasonable dispute,” which precludes consideration of them at this stage. (Resp. at 5-6.) Facebook also challenges Teachbook’s position that its filing with the European trademark authority is a “judicial admission,” because the filing was not made in the present litigation. (Id. at 6.) Facebook further maintains that the document is irrelevant to this case based on disparate factual and legal contexts. (Id. at 6-7.) Lastly, Face-book objects to Teachbook’s reliance on dictionary definitions that, in Facebook’s view, are of reasonably disputed evidentiary value. (Id. at 7-8.)
As indicated, a court may consider facts subject to judicial notice in the context of a motion to dismiss under Rule 12(b)(6).
Tellabs,
Matters of public record, such as the contents of court records, can fall within this narrow category of judicially noticeable facts.
Id.
at 1082. The reason for allowing courts to consider such records is “to avoid unnecessary proceedings when an undisputed fact in the public record establishes that the plaintiff cannot satisfy the 12(b)(6) standard.”
Id.
at 1081. But
In General Electric Capital, the Seventh Circuit reversed the dismissal of a claim pursuant to Rule 12(b)(6), because the district court had improperly taken judicial notice of its own findings in a prior proceeding. Id. at 1076. In the prior proceeding, the district court had approved a class action settlement based on the transfer of 95% of one company’s assets to another company. Id. at 1078. In doing so, the district court determined that the settlement was “fair, reasonable, and adequate.” Id. In a subsequent proceeding, a plaintiff who had not been a party in the prior proceeding sought to set aside the transfer as fraudulent under Illinois law. Id. The district court took judicial notice of its approval of the prior settlement as “fair, reasonable, and adequate” to determine that the present plaintiff could not state a claim, given that the plaintiffs fraudulent transfer claim required proof that the transfer was not for “reasonably equivalent consideration.” Id. The Seventh Circuit rejected the district court’s use of judicial notice because it “question[ed] the evidentiary value of the earlier approval of a class action settlement in determining whether the transfer was not for reasonable value.” Id. at 1082. Thus, the application of the earlier finding to the subsequent proceeding was subject to “reasonable dispute” and thus not appropriate for judicial notice. Id. at 1083 (citing Fed.R.Evid. 201(b)).
As with the Seventh Circuit in General Electric Capital, we “question the evidentiary value” of the documents Teachbook now proffers. Id. at 1082. This is not to say that these documents are of no evidentiary value — they may well have some. Instead, we merely conclude that their evidentiary value is subject to “reasonable dispute.” Fed.R.Evid. 201(b). Thus, they are not appropriate subjects of judicial notice.
As Facebook rightly points out, its fifing with the European trademark authority occurred in a very different factual and legal context. Although Teach-book describes the filing as a “judicial admission” that is fatal to Facebook’s current claim, this characterization is incorrect. (Mem. at 9-11.) A judicial admission occurs “[w]hen a party in a lawsuit makes an admission in its pleadings or in its answer to a request for admissions!.]”
Kohler v. Leslie Hindman, Inc.,
The same is true for the other exhibits of which Teachbook asks us to take judicial notice. These exhibits consist of USPTO records and dictionary definitions. (Mem., Exs. C-H.) Teachbook relies on these exhibits to argue that Facebook cannot state a trademark infringement claim based on Teachbook’s use of the suffix-BOOK, because it is generic and unlikely to cause confusion. (Mem. at 11-13.) Once again, however, the evidentiary value of these exhibits in this case is subject to “reasonable dispute.” Fed.R.Evid. 201(b);
General Electric Capital,
2. Documents Referenced in the Complaint
The last three exhibits Teachbook seeks to introduce are printouts from Facebook’s website. Teachbook argues that it is proper to “consider copies of the parties’ websites, since they are specifically referenced in the Complaint and crucial to [Face-book’s] claims.” (Mem. at 6.) Facebook disputes Teachbook’s contention that the exhibits are “central to Facebook’s claims.” (Resp. at 7.)
It is true that a court may consider documents attached to a defendant’s motion to dismiss, where those documents “are referred to in the plaintiffs complaint and are central to [the plaintiffs] claim.”
Venture Associates Corp. v. Zenith Data Systems Corp.,
But Teachbook’s website printouts are not the type of documents that may properly be considered as central to Face-book’s claim. The first exhibit is a printout from the “Press Room” portion of Facebook’s website with a text box labeled “About Facebook.” (Mem., Ex. A.) While the nature of Facebook’s website and business is likely to play a role in this case, Teachbook has not demonstrated that this particular portion of Facebook’s website is central to Facebook’s claim. Indeed, allowing Teachbook to cherry pick portions of Facebook’s website to introduce via a motion to dismiss simply because the complaint implicates the two websites would convert an examination of the complaint in to full-blown summary judgment analysis. This result would vitiate an otherwise narrow exception to the general rule that a motion under Rule 12(b)(6) stands or falls based on the allegations in the complaint.
The other printouts Teachbook offers from Facebook’s website are similarly inappropriate to consider at this stage. One set of these printouts consists of portions of Facebook’s website pertaining to Face-book groups — that is, associations of Face-book patrons — for which the name of the group contains the suffix-BOOK. (Mem., Ex. I.) The groups included run the gamut from “Catbook” to “Faithbook” to “Lame-book.” (Id. at 1-3.) The last exhibit is a printout of another portion of Facebook’s website dedicated to the Facebook group named “Hey Facebook, Leave Teachbook Alone!” (Id., Ex. J.) Again, it would be a stretch to describe these exhibits as “central” to Faeebook’s claim. While these exhibits may have some evidentiary value, they are not the type of crucial documents, such as a contract in a breach of contract claim, that can be introduced as part of the pleadings at the motion to dismiss stage.
Thus, none of Teachbook’s ten exhibits may be considered in conjunction with its motion to dismiss under Rule 12(b)(6). The only way we could consider these exhibits at this time would be to convert Teachbook’s motion to one for summary judgment. Given that this case involves eight separate although related claims and complex issues of law, we decline to convert Teachbook’s motion. Accordingly, the only alleged facts we will consider are those appearing in Facebook’s complaint and accompanying exhibits.
Having settled what alleged facts we are to consider, we turn to the standard by which we shall consider them. It is well-settled that a motion to dismiss under Rule 12(b)(6) is meant to test the sufficiency of the complaint, not to decide the merits of the case.
Gibson v. City of Chi,
Although a facially plausible complaint need not give “detailed factual allegations,” it must allege facts sufficient “to raise a right to relief above the speculative level.”
Twombly,
III. ANALYSIS
In its eight-count complaint, Facebook accuses Teachbook of trademark infringement, trademark dilution, false designation of origin, and cybersquatting in violation of the Lanham Act and related federal statutes. (Compl., Counts I — III, VI.) Face-book also brings analogous common law and Illinois statutory claims. (Id. Counts IV-V, VII-VIII.)
Teachbook moves to dismiss the entirety of Facebook’s complaint for two reasons. (Mot. & Mem.) First, Teachbook maintains that the only similarity between the FACEBOOK and TEACHBOOK marks is the suffix-BOOK, which Teachbook argues is a generic term unentitled to trademark protection. (Mem. at 8-13.) Second, Teach-book asserts that Facebook has failed to allege — and, moreover, cannot allege — that the similarity between the FACEBOOK and TEACHBOOK marks is likely to cause confusion. (Id. at 6-8, 13-15.) In Teachbook’s view, these arguments require dismissal of the entirety of Face-book’s complaint.
We consider each of these arguments in turn. We also briefly consider Facebook’s trademark dilution claim. Although Teachbook contends that all of Facebook’s claims will rise or fall together based on the likelihood of confusion or lack thereof, this position is incorrect as a matter of law. (Id. at 6.) Trademark dilution is an alternative theory to trademark infringement and does not require establishing the likelihood of confusion. Thus, we conclude by evaluating whether Facebook has stated a trademark dilution claim.
Teaehbook argues that “Facebook is simply unable to allege that the lone similar element in the parties’ marks — the word BOOK — is sufficiently distinctive to warrant trademark protection.” (Mem. at 11.) Teachbook also relies heavily on a case from the Southern District of New York,
Le Book Publishing, Inc. v. Black Book Photography, Inc.,
A trademark infringement claim under the Lanham Act has two elements.
See
15 U.S.C.A. § 1125(a) (West 2009). First, the plaintiff must show “that its mark is protected under the Lanham Act.”
Barbecue Marx, Inc. v. 551 Ogden, Inc.,
Courts considering whether a mark is “sufficiently distinctive” to warrant trademark protection evaluate the mark based on a hierarchy of classifications.
Id.
Proceeding from the least eligible for protection to the most, the hierarchy is as follows: generic, descriptive, suggestive, arbitrary, and fanciful.
Id.; see also Bliss Salon Day Spa v. Bliss World LLC,
Moving up the hierarchy, a descriptive mark “is one that specifically describes a characteristic or an ingredient of a product.”
Liquid Controls,
There is a crucial divide at this point in the hierarchy, which separates generic and descriptive marks from the last three categories of suggestive, arbitrary, and fanciful marks. The significance of this divide stems from the fact that marks in the latter group are “inherently distinctive” and, as a result, are automatically entitled to trademark protection without any proof of acquired secondary meaning.
Platinum Home Mortg. Corp. v. Platinum Fin. Group, Inc.,
Lastly, resting atop the hierarchy are those marks that are arbitrary or fanciful. Arbitrary marks are those containing words or symbols in common usage but bearing no relation to the good or service underlying the mark. 4 J. Thomas McCarthy,
McCarthy on Trademarks and Unfair Competition
§ 11:4 (4th ed. 2011) [hereinafter
“McCarthy on
Trademarks”]. A classic example is the use of the “Apple” trademark for computers.
Bliss Salon Day Spa,
Where a particular mark falls within this hierarchy is a factual determination to be reviewed only for clear error.
Platinum Home Mortg. Corp.,
In this case, the parties dispute what the basis for Facebook’s trademark infringement claim is. Facebook contends that it is suing for infringement of its FACEBOOK mark, which, according to documents attached to the complaint, has been registered in accordance with the Lanham Act. (Compl., Ex. A.) Teachbook contends that Facebook’s trademark infringement claim is based on the word BOOK, which
In support of its position, Teachbook primarily relies on the
Le Book
case from the Southern District of New York. (Mem. at 8-9, 11-13.) The plaintiff in that case was the publisher of a print directory targeted at the creative industries, namely those involved in fashion, advertising, media and visual production.
Teachbook also points to other cases from this circuit in which trademark infringement claims have failed based on the mere overlap of generic or descriptive components of marks. (Mem. at 11 — 13.) For instance, in
Spraying Systems,
the Seventh Circuit affirmed summary judgment for the defendant even though the defendant’s marks, like the plaintiffs, contained the suffix “-jet.”
Teachbook also relies on the Seventh Circuit’s holding in
Top Tobacco, L.P. v. North Atlantic Operating Co.,
Teachbook’s invocation of
Le Book, Spraying Systems,
and
Top Tobacco
does
In any event, even if we were to focus exclusively on the suffix-BOOK in Facebook’s and Teachbook’s marks, Face-book has still made sufficient allegations to preclude a finding of genericness at this point. As indicated, a mark or component of a mark is generic when it “designate[s] the product[ ] [itself] rather than any particular maker[.]”
Bliss Salon Day Spa,
This case is also notably different from
Le Book
and
Spraying Systems.
In
Le Book,
the connection between the plaintiffs mark and the underlying product was obvious. The “Le Book NY” mark was used to sell what was obviously a “book” in the traditional sense of a printed, bound volume. Accordingly, the defendant’s use of “The Black Book” to sell another “book” in the traditional sense was thus not infringing. The same is not true here. Facebook is using the suffix-BOOK to offer social networking services. Coincidentally, so is Teachbook. Given the apparent dissimilarity between the mark and the underlying product, we cannot conclude at this point that Facebook’s use of the suffix-BOOK is generic. By this same reasoning,
Spraying Systems
is also inapposite. In that case, the connection between the plaintiffs mark and the underlying
This case is also distinguishable from Top Tobacco on the issue of genericness or descriptiveness. Besides the fact that the Court in Top Tobacco was reviewing the district court’s grant of summary judgment, whereas we are only at the motion to dismiss stage, the Court in Top Tobacco was confronted with two distinctive uses of the same word. As the Court observed, the word “top” has many meanings, and the parties in that case were in fact relying on at least two different ones. The plaintiff used “top” in reference to the spinning toy and perhaps as a double entendre to suggest high quality, whereas the defendant used “top” in reference to a lid. Here, the word “book,” unlike “top,” does not instantly call to mind a multiplicity of meanings. Furthermore, absent a more-developed record, we have no way of knowing if the parties are using the suffix-BOOK in substantially different ways or if, as appears to be the case, they are in fact using the word in the same way. For these reasons, Top Tobacco also does not command dismissal.
Finally on the issue of genericness, Teachbook’s motion also fails to acknowledge the presumption afforded to Facebook at this stage in the proceedings arising from the registration of the FACE-BOOK mark. As indicated, Facebook has alleged in the complaint and submitted supporting documentation indicating that its FACEBOOK mark is registered in accordance with the Lanham Act. Given that we have decided to consider the mark as a whole for purposes of this motion to dismiss, the alleged registration of the FACEBOOK mark means that that mark is presumptively not generic and, at the very least, has acquired secondary meaning. Teachbook’s arguing otherwise is an attempt to introduce evidence to rebut the complaint, which is impermissible at this stage. Thus, the registration of the FACEBOOK mark means that Facebook has sufficiently alleged the first element of its trademark infringement claim, namely, that the FACEBOOK mark is a protected trademark.
B. Likelihood of Confusion
Teachbook also challenges whether Facebook has stated the second element of its trademark infringement claim. In order to establish this element, Facebook must show that Teachbook’s use of the TEACHBOOK mark “is likely to cause confusion among consumers.”
Barbecue Marx,
(1) the similarity between the marks in appearance and suggestion;
(2) the similarity of the products;
(3) the area and manner of concurrent use;
(4) the degree and care likely to be exercised by consumers;
(5) the strength of the plaintiffs mark;
(6) any actual confusion; and
(7) the intent of the defendant to ‘palm off his product as that of another.
AutoZone, Inc. v. Strick,
Teachbook assails the complaint for what it sees as a failure to adequately plead these factors. Specifically, Teach-book argues that “Facebook’s allegation of similarity is belied by the Marks themselves” and “[a] mere glance at the two marks is all that is needed to decide this [m]otion.” (Mem. at 6-7.) Teachbook also bemoans Facebook’s failure to allege actual confusion, which, in Teachbook’s view, is surprising in light of Facebook’s purportedly “ ‘enormous and loyal user base.’ ” (Mem. at 13 (quoting Compl. ¶ 10.).) Lastly, Teachbook challenges Facebook’s allegation of bad intent based on the fact that “Teachbook publicly and affirmatively distinguished its services from those of Face-book and MySpace.” (Id. at 14.) We consider each of these arguments and Facebook’s responses thereto in turn.
1. Similarity of the Marks
In its brief in support of its motion to dismiss, Teachbook boldly asserts: “A mere glance at the two marks is all that is needed to decide this [mjotion.” (Mem. at 6.) After placing color images of the two marks on the front page of its brief, Teachbook proceeds to highlight the visual and aural differences between the FACEBOOK and TEACHBOOK marks. (Id. at 1, 7-8.) As Teachbook summarizes: “[i]t is undeniable that the two marks are completely different, not only in the first dominant word, but also in typeface, style, coloration, and overall commercial impression.” (Id. at 7-8.)
Teachbook’s argument channels the Seventh Circuit in
Top Tobacco,
where the Court began: “This case illustrates the power of pictures. One glance is enough to decide the appeal.”
But in other cases, the Seventh Circuit has broadened the inquiry beyond the visual similarity or dissimilarity of the marks. As the Seventh Circuit stated in
AutoZone,
“we must compare the marks in light of what happens in the marketplace and not merely by looking at the two marks side-by-side.”
In this case, Facebook has adequately alleged similarity between the marks based on the relevant case law. Specifically, Facebook alleges that “[t]he TEACHBOOK Mark is highly similar to the registered FACEBOOK Marks in appearance, sound, meaning, and commercial impression.” (Compl. ¶ 25.) Although Teachbook assails this allegation as “conclusory” and “pure folly,” we disagree with Teachbook’s characterization. (Mem. at 1.) At the very least, this allegation points to the textual and aural similarities between the two marks, which, as in
Eli Lilly,
are rather obvious.
Furthermore, even though Teachbook makes much of the differences between the coloration and font of the marks, we think it is reasonable to infer that these aspects of the marks would matter less “in light of what happens in the marketplace” that is relevant to this case.
AutoZone,
2. Actual Confusion
Teachbook also criticizes Face-book for failing to allege actual confusion. (Mem. at 13-14.) Teachbook views this omission as particularly glaring in light of Facebook’s claim to have an “enormous and loyal user base.” (Mem. at 13 (quoting Compl. ¶ 13).) But Teachbook’s insistence on an allegation of actual confusion is contrary to what is required to state a trademark infringement claim. As the Seventh Circuit has made clear, “[n]o single factor is dispositive” in evaluating the likelihood of confusion.
AutoZone,
3. Intent
Teachbook argues that Facebook has failed to adequately plead Teachbook’s intent to “palm off’ its services as those of Facebook. (Mem. at 14.) In fact, Teach-book points to allegations in the complaint indicating that Teachbook, on its own website, “publicly and affirmatively distinguished its services from those of Face-book and My Space.” (Id.) In Teachbook’s view, “distinguishing another product or service is the opposite of intending to palm off.” (Id. (emphasis in original).) Thus, based on the supposedly contradictory allegations in the complaint, Teachbook maintains that Facebook has not sufficiently alleged an intent to confuse consumers.
Before evaluating the intent allegations in the complaint, it is important to identify what suffices as “bad intent” for trademark infringement purposes, particularly in cases involving the internet.
Eli Lilly
is especially instructive on this point. As indicated, that case involved a dispute between the maker of the drug “Prozac” and the maker of an herbal supplement “Herbrozac.”
The facts alleged in the complaint here, if true, are similar to those in
Eli Lilly.
As was true with the maker of “Prozac” in
Eli Lilly,
Facebook alleges that its marks have achieved significant fame in part as a result of “extensive and continuous media coverage.” (Compl. ¶ 10.) Facebook also contends that “[Teachbook] adopted the TEACHBOOK Mark with knowledge of, and the intent to call to mind and create a likelihood of confusion with regard to, and/or trade off the fame of Facebook and the registered FACEBOOK marks.”
(Id.
¶ 28.) In essence, Facebook, through this allegation, is promising to prove what the plaintiff in
Eli Lilly
successfully proved: “that the name [TEACHBOOK] was coined to remind consumers of [FACEBOOK].”
But Teachbook points to other allegations in the complaint that it claims undermine Facebook’s allegation of bad intent. Specifically, Teachbook points to Face-book’s inclusion of the following statement from Teachbook’s website in the complaint:
Many schools forbid their teachers to maintain Facebook and MySpace accounts because of the danger that students might learn personal information about their teachers. With Teachbook, you can manage your profile so that onlyother teachers and/or school administrators can see your personal information, blogs, posts, and so on. Teachbook is all about community, utility, and communication for teachers.
(Compl. ¶ 13.) According to Facebook, this statement evidences Teachbook’s attempt to offer itself as “a substitute for Facebook.” (Id.) But in Teachbook’s view, this statement demonstrates Teachbook’s attempt to distinguish itself from Facebook, which it contends “is the opposite of intending to palm off.” (Mem. at 14 (emphasis in original).)
We do not view the statement from Teachbook’s website as contradictory to Facebook’s allegation of bad intent. Again, the situation is analogous to
Eli Lilly.
There, the defendant promoted its herbal supplement “Herbrozac” as an alternative to “Prozac” and disclaimed association with the maker of “Prozac” on its website. Nevertheless, the Seventh Circuit concluded that, even though the defendant was offering an alternative to “Prozac,” it was doing so by unfairly invoking the fame of the “Prozac” name and attempting “to divert [internet users searching for information on Prozac to [the defendant’s] [w]eb site.”
Furthermore, who is to say these teachers might not think that Teachbook is Facebook’s response to some schools banning teachers from using Facebook? In light of such policies, a reasonable consumer might assume that Facebook was offering social networking services targeted specifically at teachers and addressing the privacy concerns at which the schools’ policies are apparently aimed. The same consumer might further assume that Face-book, in order to draw on its famous name, decided to call that service TEACHBOOK. Indeed, nothing in the statement from Teachbook’s website indicates that this is not the case. Thus, nothing in Facebook’s complaint undermines its allegation that Teachbook intends “to mislead consumers into believing that [Teachbook] is somehow affiliated with [Facebook].”
AutoZone,
4. Other Factors
Teachbook’s arguments regarding the likelihood of confusion focus primarily on three factors: similarity, actual confusion, and intent. As discussed, the allegations in the complaint, taken as true, establish that at least two of these factors weigh in Face-book’s favor. Teachbook also largely fails to acknowledge the remaining factors, many of which are clearly alleged in the complaint.
Specifically, Facebook has adequately alleged that Teachbook and Face-book are offering similar products. According to the complaint, both Facebook and Teachbook operate social networking websites. (Compl. ¶¶ 6, 13.) Teachbook
Facebook has also adequately alleged that “the area and manner of concurrent use” of the marks are the same. The complaint states that “[b]oth Facebook and [Teachbook] offer their services through the same channel of trade, i.e., the internet.” (Id. ¶ 27.) And as indicated above, Facebook alleges that its FACEBOOK marks have achieved substantial fame. (Id. ¶ 10-11.) This allegation, if true, would demonstrate that the marks upon which Facebook brings its claim are strong. Based on our reading, the complaint is largely silent as to the degree and care likely to be exercised by consumers. Given Facebook’s numerous allegations relating to the other factors, however, the absence of this factor is of no moment for our present purposes.
In all, Facebook has alleged that five of the seven factors courts use to determine the likelihood of confusion in trademark infringement claims are present in this case. In view of the fact that the seven-factor test requires equitable balancing and not all of the factors need to be present, Facebook’s allegations are sufficient to state a claim for trademark infringement. Accordingly, Teachbook’s motion is denied with respect to Count I. Furthermore, because Teachbook assumed the position in its motion and supporting briefs that all of Facebook’s claims would stand or fall with the trademark infringement claim (Mem. at 6,15), Teachbook’s motion is also denied with respect to Counts III through VIII. We briefly address Count II, Facebook’s trademark dilution claim, below.
C. Trademark Dilution
Teachbook argues that “[a]ll of Facebook’s claims demand that there is a confusing similarity of some distinctive feature of the parties’ marks.” (Mem. at 6.) While Teachbook is correct that Face-book must show similarity between its marks and Teachbook’s, Facebook need not prove
“confusing
similarity” to sustain a trademark dilution claim.
3
In order to
For a traditional trademark infringement claim, the harm to be remedied is the possible deception of consumers through the use of similar or identical trademarks. The paradigmatic trademark infringement claim arises when consumers seeking to obtain goods or services from one source— that is, the owner of a particular trademark — instead obtain them from another source while thinking the goods or services are from the first source due to confusingly similar trademarks. In other words, trademark infringement claims protect against a harm akin to fraud. Id. § 24:72.
For a trademark dilution claim, however, the harm is not based on the potential for consumer confusion. A trademark dilution claim can still arise where consumers have not been and are not likely to be confused about the source of goods or services offered under the same or similar trademarks. Rather, a trademark dilution claim — and specifically one that relies on a theory of dilution by “blurring,” as is alleged here (Compl. ¶ 38) — stems from a trademark losing its ability to trigger an association in consumers’ minds between the trademark and a particular producer of goods or services. McCarthy on Trademarks § 24:69. For instance, as one commentator hypothesizes, Tiffany’s, the famous jewelry store, might have a trademark dilution claim against a new restaurant named Tiffany’s. Id. The harm in that case would not be related to customer confusion, because reasonable consumers would be capable of distinguishing between Tiffany’s the jewelry store and Tiffany’s the restaurant. Instead, the harm would arise from the diminished ability of the Tiffany’s trademark to trigger an association with the purveyor of high-end jewelry. Id. In this way, the harm in the trademark dilution context has been described as akin to trespass, whereby the trademark owner’s property right in the trademark undergoes a “gradual whittling away.” Id. § 24:72.
Thus, despite what Teachbook says, not all of Facebook’s claims turn on the likelihood of consumer confusion. Rather, Facebook’s trademark dilution claim presents an alternative avenue for relief even if Facebook is unable to prove the likelihood of confusion necessary to sustain its trademark infringement and related claims. The allegations in the complaint are also sufficient to state a claim for trademark dilution. Specifically, Face-book avers that its marks are famous within the meaning of the trademark dilution statute (Compl. ¶ 10 (citing 15 U.S.C. § 1125(c))) and that they became so prior to Teachbook’s adoption of the TEACH-BOOK mark
(Id.
¶37). Facebook also alleges that Teachbook’s use' of the TEACHBOOK mark “impairs the distinctiveness of the FACEBOOK Marks and weakens the connection in consumers’ minds between the Facebook Marks and Facebook’s services.”
(Id.
¶ 38.) Lastly, Facebook states that Teachbook is using its mark “in connection with a business and online website.”
(Id.
¶ 12.) These allegations are sufficient to state a claim for trademark dilution. Accordingly,
IV. CONCLUSION
Teachbook’s motion to dismiss the complaint is denied as to all counts. It is so ordered.
Notes
. Teaehbook also argues that Facebook has admitted that the overlapping use of the suffix-BOOK is insufficient to state a trademark claim. (Mem. at 9-11.) Teachbook's argument is based on Facebook’s filing with the European trademark authority, which we have determined to be inappropriate to consider at this stage. (Id.) As such, we do not evaluate this argument here.
. In its motion to stay discovery during the pendency of this motion to dismiss, Teach-book indicates that it intends to argue that the suffix-BOOK is generic "for directory and networking services.” (Dkt. No. 26 ¶ 5.) But this argument requires proof and goes beyond the appropriate grounds for a motion to dismiss. Facebook also points to allegations in the complaint that, thanks to its efforts, the suffix-BOOK in the internet-based social networking context is distinctive. (Resp. at 12.) Thus, whether the suffix-BOOK is generic for online "directory and networking services” can not be definitively resolved at this stage.
. As discussed above, we have already determined that Facebook has adequately alleged similarity between its marks and Teachbook's. In its reply, however, Teachbook suggests that the degree of similarity required to establish a trademark dilution claim is higher than that which is required for a trademark infringement claim. (Reply at 14.) We do not think that this contention is true. Indeed, at least one circuit court, the Ninth Circuit, has rejected a heightened standard of similarity for trademark dilution claims. In rejecting the district court’s application of an "identical or nearly identical" standard to a trademark dilution claim, the Ninth Circuit recognized that Congress, in passing the Trademark Dilution Revision Act of 2006, Pub.L. 109-312, 120 Stat. 1730, did not intend to require heightened similarity.
Levi Strauss & Co. v. Abercrombie & Fitch Trading Co.,