CHICAGO (CN) - Facebook must face a jury trial over its use of the term "Timeline," which is trademarked by the social networking site Timelines.com, a federal judge ruled.
Timelines.com runs a social networking website where users can access and post personal or historical content along a timeline. If a student posts information about the American Civil War, for example, a separate user can also access the website and post additional related information, according to the complaint
The website averaged 94,000 users in 2011 and 2012, and has 1,209 registered users. It registered a trademark for "Timelines" in 2010.
In 2011, Facebook introduced a Timeline feature that chronologically tracks the information users enter into the site. Timelines.com said Facebook knew of its service prior to announcing the new feature, but used the term anyway to dominate the search-engine results.
As quoted in a statement of facts that Timelines filed with the court, Facebook CEO Mark Zuckerberg introduced the Timeline feature in 2011 by remarking that the company "decided to focus in two places: all the stuff we want to do (products), and also wanted to punch anyone who tried to compete with us in the face really hard. You have to teach people who compete with you 'don't even fucking bother.'"
Setting the stage for a jury trial on the matter, U.S. District Judge John Darrah this week rejected Facebook's argument that "Timeline" is too generic to enforce as a trademark.
"The use of the term by the media fails to rebut the presumption of the marks' validity, as the term was obviously used in common speech prior to the PTO's issuance of plaintiff's registrations," Darrah wrote, abbreviating Patent and Trademark Office. "This evidence simply indicates the PTO was aware of these other uses of the terms at issue and found that plaintiff was not using the term in a generic manner. ... Hence, this evidence does not support a finding of genericness sufficient to award defendant summary judgment."
Facebook furthermore cannot claim that fair use protects its use of "Timeline" because "genuine issues of material fact remain regarding defendant's use of the term 'Timeline' in good faith, as evidence demonstrates that defendant was aware of plaintiff's registered trademarks and defendant's CEO commented that defendant 'wanted to punch anyone who tried to compete with [Facebook] in the face really hard,'" according to the ruling.
Timelines.com seeks damages equal to Facebook's timeline-derived ad revenue.
A jury trial is set for April 22.