Trademark Dispute : Facebook vs. Shagbook [Adult Dating Site]

source: http://mashable.com/2011/08/04/facebook-vs-shagbook/ and http://www.scribd.com/doc/61627005/Facebook-vs-Shagbook

In an eyebrow-raising trademark battle, Facebook filed suit against adult dating site Shagbook in May. Facebook’s contention: that the world’s largest social network would be “damaged by the issuance of a registration for the mark Shagbook.”

Shagbook has now filed its own opposition, along with counterclaims, with the United States Patent and Trademark Office.

As represented by SNRG Ventures, Shagbook, in the filing, “denies the allegation that Facebook is highly distinctive as it is a generic term.” It also challenges the validity of Facebook’s trademark, arguing that it should never have been granted.

Shagbook, in Facebook’s reasoning, is in violation of Facebook’s trademark because the site’s name is highly similar in “appearance, sound meaning, and commercial impression.” Its filing says the name was adopted with “the intent to call to mind and create a likelihood of confusion … and/or trade off the fame of Facebook.”

Not so, says Shagbook. When its American owner was living in the UK, he “referred to his little black book as his little ‘Shagbook’,” a representative for SNRG Ventures told Mashable. “He was amused with the word ‘shag,’ and picked up the name Shagbook.com, all perfectly innocently,”

Just how far will Shagbook go to fight Facebook’s trademark suit? “SNRG and Facebook’s attorneys have spoken but there have been no formal negotiations as of yet,” the representative tells us. “SNRG plans to vigorously defend the Shagbook mark.”

Facebook did not immediately respond to a request for comment.

This isn’t the first instance of Facebook attempting to protect its mark. The social network has made several prior trademark claims against web companies using “face” or “book” in their names.

The full text of Facebook’s original filing against Shagbook, and Shagbook’s counter are here.