Intellectual Property Attorney

Is “Timeline” Descriptive? Facebook Set To Go To Trial In Trademark Infringement Action Over Its Use Of “Timeline”

On September 22, 2011, at a time when the world’s leading social-networking website boasted a reported 800 million users, Facebook announced a revolutionary new user interface, dubbed “timeline“. Facebook’s CEO Mark Zuckerberg called “timeline” an “important step in telling your life.” The new interface assimilated numerous diverse components, content and media into a single interface so that users could share pictures, music, videos and other content in real time, among other features. At the time, Zuckerberg added that the “next five years will be defined by apps and the depth of social engagement” — “timeline” was designed to be at the forefront of social engagement. Indeed, Facebook still uses the “timeline” interface today.

As it turns out, while Facebook was hoping its 800 million users would quickly embrace the “timeline” feature, a small company in Chicago was taking up arms. On September 29, 2011 — just 7 days after Facebook’s “timeline” was announced — Timelines, Inc. filed a complaint in the U.S. District Court for the Northern District of Illinois alleging that Facebook’s use of “timeline” infringed Timelines’ federal trademark registrations for “Timelines” (Reg. No. 3,685,074), “” (Reg. No. 3,784,720) and “Timelines & Design” (Reg. No. 3,784,720). The following day, Timelines filed a motion for temporary restraining order seeking to prohibit from using and implementing “timeline” on its website. Although Timelines, Inc.’s motion for restraining order was denied only two days after it was filed, the case has continued to press forward.

The litigation is notable for its focus on whether the words “timeline” or “timelines” are protectable as trademarks or, more specifically, whether the words “timeline” or “timelines” are generic or descriptive. In January our colleague Jessica Rutherford wrote an excellent post addressing the potential “pitfalls” of adopting a descriptive trademark. This case highlights those potential “pitfalls”.

Among other things, Timelines, Inc. operates, a website that “allows users to record and share events, and contribute descriptions, photos, videos, geographic locations and links … related to events and people,” according to the Amended Complaint. Timelines allegedly first learned of Facebook’s use of “timeline” when it was announced by Zuckerberg in September 2012. The company claims that throughout Zuckerberg’s announcement he “consistently referred to Facebook’s Timeline in a trademark way and as the identifier for a specific product or service.” In addition, Timelines, Inc. also claims that “starting soon after Facebook’s announcement and for days after (until [Timelines, Inc.] appeared in court on its Motion for Temporary Restraining Order), Facebook re-directed Internet users attempting to access [Timeline, Inc.’s] Facebook page” so that users would unintentionally arrive at “Facebook’s own Timeline product offering”.

Facebook countered that “timeline” is descriptive or generic. In its counterclaims, for example, Facebook alleged that “timeline” has been used extensively by third-parties “to describe or identify goods and services that enable users to create and share chronologies of events in their personal lives, in history, or any other subject matter of their choosing.” Facebook is seeking a declaration of non-infringement and cancellation of Timelines, Inc.’s registered trademarks.

In January, Facebook moved for summary judgment on the following grounds: (i) Timelines, Inc. has no trademark rights in “timelines” or “timeline” because it is inherently generic or descriptive; and (ii) even if “timeline” or “timelines” was protectable as a trademark, Facebook has engaged in non-infringing use because “timeline” fairly and accurately describes a feature of its user interface. With respect to its argument that “timeline” is generic, Facebook contends that “timeline” is “commonly used as the name of a kind of good or service.” To support this proposition, Facebook points to a variety of sources and evidence, including ordinary dictionary definitions, evidence that Timelines, Inc. itself uses ‘timeline’ generically, rampant third-party usage of “timeline” generically, extensive popular media use of “timeline” generically and survey evidence showing that a “significant majority” of relevant consumers believe “timeline” and “timelines” are generic.

Alternatively, Facebook countered that “timeline” is descriptive, and Facebook claims that “timeline” has not acquired secondary meaning. A descriptive mark cannot serve as a trademark unless it has acquired secondary meaning, i.e., unless it has become “uniquely associated with the original seller.” Custom Vehicles, Inc. v. Forest River, Inc., 473 F.3d 481, 483 (7th Cir. 2007) (“the name …come[s] to be uniquely associated with the original seller, and … the term can be appropriated as a trademark because it has come to denote a single brand, not the entire product, so that its use by other sellers of the product would confuse consumers about the source of what they’re buying.”) In the Seventh Circuit, secondary meaning can be shown through direct consumer testimony, consumer surveys, length of use, manner of use, amount or manner of advertising and sales, among other things.
See, e.g., Spraying Sys. Co. v. Delavan, Inc., 975 F.3d 393 (7th Cir. 1992). In this case, Facebook contends that Timelines, Inc. did not “proffer
any evidence demonstrating that its alleged mark has acquired secondary manning,” i.e., no surveys or other evidence. This may well prove fatal to Timelines, Inc. case.

Finally, Facebook argues that it does not engage in “trademark” use of “timeline”. In this respect, Facebook contends that it uses the “word ‘timeline’ in textual sentences in lower-case letters as a generic noun to refer to a feature of a user’s profile.” Facebook compares its use of “timeline” to the use of “map”, “photos” and “friends” on its website, each of which describes the features of a particular component or service available to Facebook’s users.

It will be interesting to evaluate Timelines, Inc.’s response to Facebook’s motion for summary judgment and, in particular, the allegation that it has not provided any evidence of secondary meaning. A pretrial conference is currently set for April 11, 2013. We will monitor the progress of the litigation. The case is Timelines, Inc. v. Facebook, Inc., Case No. 11-CV-06867 (N.D. Illinois). For further discussion of the “pitfalls” of descriptive trademarks please read
Jessica Rutherford’s post.

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