Facebook refuses to change Paper app’s name following FiftyThree’s objection

By , Feb 3, 2014

Facebook Paper 1.0 for iOS (iPhone screenshot 002)Facebook Paper 1.0 for iOS (iPhone screenshot 003)

Facebook’s new Paper for iPhone app is out in the wild now. Released earlier this morning as a free download in the US App Store, already the software has created a controversy by using the same name as FiftyThree’s popular drawing program, Paper for iPad, also a free download.

Facebook was of course aware of FiftyThree’s Paper, Apple’s 2012 iPad App of the Year. In fact, the social networking giant was kindly asked well in advance of its own release to avoid using the same name, but refused…

Seattle- and New York-based FiftyThree says its app, released in March of 2012, has been trademarked in the United States and in several countries abroad. The U.S. Patent and Trademark Office had the ‘Paper by FiftyThree’ trademark filed on May 11, 2012.

Facebook Paper (teaser 002)
Facebook’s Paper news-reader app.

The company this morning took to the blogs in order to express its disdain with Facebook’s handling of the situation and its presumptuous use of the name Paper.

paper update
FiftyThree’s iPad drawing app, Paper.

“We reached out to Facebook about the confusion their app was creating, and they apologized for not contacting us sooner,” FiftyThree’s blog post reads. “But an earnest apology should come with a remedy”.

FiftyThree co-founder and CEO Georg Petschnigg said in an interview with the New York Times Monday:

We were really surprised when we heard that Facebook was releasing an app called Paper. We have, in writing, asked Facebook to refrain from using the name. But their response was that they apologized for not letting us know sooner, but as it stands, they are continuing with their launch.

He thinks Facebook should have come up with a different name:

There’s a simple fix here. 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,” reads the blog post. Do a quick Google search and FiftyThree’s Paper comes up at the top of your search results.

The NYT article also notes that the music playing in the video from Facebook announcing the Paper app “sounds very similar” to a video for another product by FiftyThree. His company, the CEO said, is keeping its options “open”.

Facebook’s complete ignorance of FiftyThree’s trademarked app name is especially annoying remembering that Zuck & Co. were happy to level lawsuit threats to anyone who would dare use the word ‘book’ in their name or logo.

There’s no denying that Facebook’s Paper is adding up to user confusion.

App Store (apps with Paper name 001)App Store (apps with Paper name 002)

On the other hand, the name ‘Paper’ is hardly original itself.

Besides, isn’t it way too generic?

All of this reminds me of the social games developer, King, the creator of Candy Crush Saga who famously trademarked the term ‘candy’ and went after developers whose app names contained ‘candy’.

As for FiftyThree’s Paper vs. Facebook’s Paper, from my vantage point the right move should have been to apologize to FiftyThree and simply rebrand the app as Facebook Paper – impossible to mistake for FiftyThree’s Paper and good for Facebook’s karma.

Even better, as a commenter pointed out: Facebook Stories.

Thoughts?

Is it asinine that Facebook stole the name and should they change it?

And does FiftyThree’s trademark stand a chance in court?

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  • trekka3311

    I think a good name for this app could be – Stories… goes with what facebook is trying to do with this app.

    • kadeem kadz Dulice

      agreed

    • Tobias9413

      Make app called stories. Trademark it just like king and paper.
      Facebook will hear this better name and rename their app.
      Sue them and settle on a good agreement that would have you set for atleast the next 10 year.
      Profit.

  • Byron C Mayes

    Was wondering when this would pop up. Have to say when I first read about Facebook’s Paper I thought they’d somehow acquired Fifty-Three’s product, too. Seems like the suggestion of “Facebook Paper” would have been a nice compromise at least to start.

    OTOH, 53′s Paper is iPad only and Facebook’s Paper is iPhone only. And fb has a bad iPad track record while 53′s is stellar. So there’s that.

  • Sean Clark

    I think that if the roles were switched, Facebook would not hesitate to sue FiftyThree, and that’s what I have a problem with. I think they should both be able to use the name, but I don’t for a second believe that Facebook would be willing to return the favor.

  • http://fingertalent.com/ Timothy Reavis

    The name “Paper” in these two apps wouldn’t likely cause any user confusion between the two, as one is for news updates on a social network, and one is for drawing. If they aren’t similar, there is no case.

    It’s like AppleCare, a health care company, vs AppleCare, Apple’s warranty plan. The name is the same, but both can legally co-exist because there is little chance of user confusing the two.

    If a lawsuit ensues, it’s doubtful that it would hold in court.

    • Winter Mute

      Trademark is narrow, you are right, but considering they both coerce in the same market by definition (app store) that changes a lot.

  • jack

    I hate FB but what the hell, “Paper” can’t be copyrighted.. there are several “Paper” apps already

  • http://R0Fleming.tumblr.com/ Romanel Fleming

    “Paper” is just a simple word. Why copyright a word? Why? Just like King (creators of Candy Crush) deciding to copyright the word “candy”. I understand you don’t want to get things confused, and you want to be unique, but in this world where more and more apps are being developed, copyrighting a simple word is just ridiculous.

    I also want to point out that FiftyThree actually named their app “Paper by FiftyThree”, and therefore, makes it even more pointless to target Facebook over the name “Paper”.

    If Facebook really has to change the name of the app, they should name it “Facebook Paper” or “Paper by Facebook”.

    • Winter Mute

      It’s not copyright, it’s trademark. They are not similar.

  • Framboogle

    Fifty threes Paper – iPad only

    Facebooks Paper – iPhone only

    What’s the problem?

    • Stefano ‘Graziani’ Polo

      touché…….. however I’d expect facebook will be making an iPad version shortly

      • John

        Yes…but……there are iPhone only Apps on iPhone such as Messenger and the always popular Poke.

  • Tony

    Only thing 53 has would be if the song in the video is close or the same then a stronger argument could be made. But the name itself? That’s a bit tougher to swollow.

  • workin

    Fbook is banking on the confusion but its clearly theft, ethics be damned maybe reveals fbook’s mission statement.

    • Winter Mute

      Not theft, theft is a word for violation of property rights with finite resources. It’s trademark infringement.

  • Jazz Bo

    I’m claiming ‘Stories”. Its mine.

  • Jazz Bo

    Anybody trademark the alphabet yet?

  • Rob

    If a bank opened up using the name chase you know people would go in expecting JP Morgans chase. Same deal, if it wasn’t the same medium then maybe the it’s a simple word argument would fly but they are both in the AppStore. One already very successful and established with the name and one still unreleased. Facebook’s reluctancy to change is what’s truly childish.

  • Adham

    If the trademark is ‘Paper by FiftyThree,’ then they don’t have a case lol

    • Winter Mute

      Yes they do, trademarks are complicated.

  • D1squs

    53 should create another app and name it Facebook and let’s see what will happen.

  • mwpitt52

    Who cares? Really do you want to give Facebook more of your personal information.

    • Winter Mute

      Yes.

  • Jay Phillips

    Paper is just another social-ist news reader that only allows you to read stories they want you to read. If you have a different point of view of what is news and what is politically correct drivel and would like to choose your own news sources you can’t. All you get is left wing trash like HuffPo and CNN. I deleted this app immediately. One of the supposedly great things about the HTC One that I can’t stand is it’s built in reader that likewise only allows you to select from left leaning news sources AND will not let you remove it from the device. All you can do is change your default screen to not have it come up first. Ignoring the interests of half the country is not a good business model.

    • Frank Lopez

      I disagree. To gain power you force people into your eco system.

      It worked wonderfully for apple. They ignore the interestes of more than half the user base and make killings every quarter.

      Adjust your public to settle for something – take control out of the ir hands – profit. because now they depend on you.

    • Winter Mute

      Jokes on you, conservatives make up less than a third of the country, and even less outside of America (this is an international product you dingus).

      • Jay Phillips

        I forget that most of the world outside of red states are socialist, hence the reason for the economic decline.

  • Frank Lopez

    Paper – should sue 53 and facebook. This trademark bullshit about graving copyright claim to NAMES is idiotic – “Candy” “Paper”

    I understand if you copyright something like facebook, rdio , beats music , brand names. But something casual like PAPER and candy? come on.

    What next – oxygen , view, like?

    • Winter Mute

      That’s not how trademark works. They have to use the name as competing for revenue in a similar market. Trademarks cover a pretty small scope and are important to prevent abuse.