On Thursday, January 30, Facebook announced that they will be releasing a “‘distraction-free’ news-reading app for iOS,” called Paper.
After this announcement, a couple of companies began to ask themselves, “don’t we own the rights to ‘paper’? And if not, why not?”
The first of these companies to react was FiftyThree, whose app Paper was launched first.
Completely different applications right? Correct. FiftyThree’s feathers aren’t ruffled because of design similarities, it’s all in the name. FiftyThree has owned the registered trademark, “Paper by FiftyThree” since December 31, 2013. According to a blog post written by Georg Petschnigg , Co-Founder and CEO of FiftyThree, “Paper” is their brand:
We think Facebook can apply the same degree of thought they put into the app into building a brand name of their own. An app about stories shouldn’t start with someone else’s story. Facebook should stop using our brand name.
In the TechCrunch article A Tale of Two Papers, Petschnigg had disclosed that they had filed an application to trademark the term “Paper” which you can see here. The application was filed on January 30, 2014.
According to this source, here’s what FiftyThree had to say in response to the filing of their application:
In the U.S., trademark rights are use-based (i.e., one does not need a registration) and FiftyThree has well-established common-law trademark rights in PAPER alone. Google “Paper” and we are the #1 result. Search for #MadeWithPaper on social media and you’ll find over a million creations in public. Indeed, PAPER alone is widely recognized by the public as our brand and trademark. And we recently filed for registration of PAPER alone.
At this point we are reserving all legal options. More importantly, we stand for creativity and believe in a level playing field when it comes to building companies and brands.
Alas, there is a third player in the game who feels their brand should have rights to the term “Paper.” On January 31, Paper Communications, Inc. filed these two applications for the term:
- http://tess2.uspto.gov/bin/showfield?f=doc&state=4809:9iv3l5.2.7 for a service mark
- http://tess2.uspto.gov/bin/showfield?f=doc&state=4809:9iv3l5.2.8 for a trademark
Who is Paper Communications, Inc.? I did a little research using the address the application has on file. Once I had a suspicion, I verified my inclination by searching the brand name in the USPTO database. Lo and behold, I found identical filing details for the word term “PaperMag.” That’s right, PaperMag have also filed an application for a trademark on the word “Paper.”
Paper Magazine: “on the front lines of cultural chaos since 1984.”
According to the trademark application from Paper Magazine, they first used the term “Paper” in commerce in 1984. With that in mind, I expect that they feel that they have more of a right, or a better chance of being awarded the trademark, because they’ve been using it commercially for 30 years.
Just so we’re all clear, Facebook hasn’t done anything wrong because no-one owns the trademark on “paper.” I am not a trademark or branding expert, and I’m not on anyone’s side, I couldn’t care less who ends up with it – or if no one ends up with it. I am just a marketer who writes for this blog. I read an article, did some research, and asked some questions.
On that note, I will leave you with this question:
Do you agree that “PAPER alone is widely recognized by the public as our brand (FiftyThree) and trademark?” Or could it be possible that you share it right now with Paper Magazine? Paper Magazine has five times as many Facebook followers and six times as many Twitter followers as FiftyThree. So isn’t Paper more widely recognized by the public as Paper Magazine’s brand and trademark?