Facebook Inc (NASDAQ:FB) “has failed to demonstrate, as a matter of law, that the marks are generic,” U.S. District Judge John W. Darrah in Chicago wrote in a ruling. “At this stage in the proceedings, it is not unreasonable to conclude that as to this group of users, ‘timeline(s)’ has acquired a specific meaning associated with plaintiff.”
Timelines Inc sued the social network in September 2011, just a week after Facebook Inc (NASDAQ:FB) announced its plans to come up with a “timeline” feature to its user pages. Timelines website, which was started in 2009, allows users to create chronologies tracing historical events such as wars, sporting events and advances in science. Timelines was founded in 2007 and holds U.S. federal trademark registration numbers for “Timelines,” “Timelines.com” and for its “Timelines” design mark. Timelines also operates a website called LifeSnapz.com and other services. The company sued Facebook Inc., owner of the world’s largest social-networking service for infringement and unfair competition.
At that time, Facebook Inc (NASDAQ:FB) counter-sued Timelines, claiming that the registered marks are not clearly distinctive to warrant protection. The company in its suit asked for non-infringement and a cancellation of the registrations.
The social network admits that it was aware of the plaintiff before it started the development of its Timeline feature and had gone forward with the term as it would help it in search engine optimization. However, Facebook Inc (NASDAQ:FB) argues that the term ‘timeline’ is either a generic term or merely a descriptive term, without secondary meaning. The company also claims that it uses the term fairly and cannot be held liable for any damages.
Timelines is asking for the damages equivalent to Facebook Inc (NASDAQ:FB)’s timeline-derived ad revenue. Douglas Albritton, an attorney for Chicago-based Timelines said, “We’re happy with the ruling.” While Facebook’s spokesperson declined to comment on the legal matter.
The Judge wrote in his order that Timelines has more than a thousand active users and have invested millions of dollars in business. The Judge added “At this stage in the proceedings, it is not unreasonable to conclude that as to this group of users, ‘timeline(s)’ had acquired a specific meaning associated with Plaintiff.”
The Jury trial for the case is fixed on April 22.