Paper (Facebook vs FiftyThree)

Facebook yesterday released its new Paper for iPhone app, a free download, prompting a swift response from Seattle- and New York-based FiftyThree which slammed the social networking behemoth for ignoring the fact that the Paper name has been associated with FiftyThree’s own iPad drawing program, also a free download from the App Store.

The small startup said Facebook had ignored requests to change its app name even though FiftyThree filed for the ‘Paper by FiftyThree’ trademark with the United States Patent and Trademark Office back in May of 2012.

Not content with Zuck & Co. piggy-backing on the established Paper brand, FiftyThree has now moved to file a trademark for the term ‘Paper’ itself. Grab your popcorn…

TechCrunch discovered that FiftyThree’s trademark application was filed for on January 30, the same day that Facebook announced Paper.

Although Facebook’s andFiftyThree’s Paper don’t compete directly, it’s fairly safe to assume that both apps fall into the same category of “consumer software applications for a mobile device.”

FiftyThree cofounder and CEO Georg Petschnigg said in an interview that his company had applied for the ‘Paper’ trademark on its own, alongside the already-approved trademark for ‘Paper by FiftyThree’.

At this point it’s about asking Facebook to do the right thing. We’re taking a stand for creativity and believe in having a level playing field when it comes to people building their brands and their companies.

He also wrote in a blog post yesterday that his company is “keeping its options open,” alluding at the possibility of a legal showdown should Facebook continue to play dumb.

If FiftyThree chooses to sue, it has a case, according to trademark lawyers Roberto Ledesma and Victor Cardona who spoke to TechCrunch:

Trademarks, to a degree, are use-based. This means that “just by using a mark in a particular field, you’ve got rights,” said Cardona. “Some are state-based and some are federal-based, but if I start using a mark before you in the same area of goods or services, I’ve got rights to the mark over you.”

FiftyThree’s CEO penned a blog post yesterday accusing Facebook of foul play.

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

The Verge in its review called Paper “the best Facebook app ever”.

Are you supportive of FiftyThree’s David vs. Goliath stance?

  • Dany Quirion

    When will it be available in the Canadian store?

    • Kenrick Fernandes

      use a US apple id & download:)

  • Jon Nguy

    “Candy” was trademarked, now “Paper” may be?
    How are they allowing these SIMPLE words to be trademarked?

    • Arthur Geron

      Even “adsdsdsd” could be trademarked, if it was the name of a product of a company..

      • Litchy

        adsdsdsd is a little bit different than paper 😀 I mean for christ’s sake its a normal word we use every day. Nobody thinks of the App Paper by FiftyThree if you speak of paper 😀

        Silly. Nothing else

      • Daniel Eliasson

        No, it isn’t. They don’t trademark the word “Paper”. What they do is get the exclusive rights to use this word as a name for an app. Just imagine if someone comes up and makes an app called “Passbook”, which doesn’t have anything to do with Apple’s Passbook. This is when trademarks come in useful.

      • ✪ aidan harris ✪

        Should this matter though? Why can’t we have more than one company or product with the same name?

      • felixtaf

        Simply to avoid confusion in competition. If there is no trademark, Coca Cola can sell it drink as Pepsi and vice versa… So trademark in very important…

      • Litchy

        I do get your point. Still. Its’s “Facebook Paper” and “Paper” both inspired by the actual paper (turning pages etc.).

        But unfortunately they have to come up with something so some people don’t get confused…

      • Carlos Gomes

        That easy? I mean, some wealthy guy could register a company and create some 200k products for teh lulu, naming them as a different english word, trademark those and pwon pretty much all english words – except ‘paper’ and ‘candy’, of course.

  • Ellis Markman

    You cannot trademark a single word like “Paper.” Though, for what it is worth, when I first heard of “Paper” (Facebook) I did think of “Paper” (53)

    • Kenrick Fernandes

      interestingly you’re one of the first people to say this

      • Jennifer

        I thought of the Paper app by 53 as well, and thought how annoyed they must be. I also wondered how Facebook was getting around this. I think FB could have come up with a different name for the app , which I dislike very much by the way. It’s not practical.

    • Daniel Eliasson

      Yes you can. You can trademark the word as a name for an App.

    • Anthony Aaron Anderson

      This is how it should be, but evidently it is not the case. Candy crush just got the trademark for the everyday, single word “candy”. If candy can be trademarked, just about anything can.

  • Mustang5Oh

    Sick of these companies trying to trademark names they didn’t create.
    On another note the Facebook Paper is easily the best FB app ever. It’s quite nice and I don’t think I’ll use the regular FB app anymore.

  • Gróf Attila

    It is insane that you can trademark a word like paper. Next I will trademark “phone” and no one will be able to use it:S

  • johurimam

    Facebook should just change the name, the app titled Paper and the icon with no visual cues that it is a Facebook program make it fair game to switch it up. They might as well name it Facebook and replace their old app; seems like they couldn’t make up their minds and now have two apps which doesn’t make sense and in the end will cost them more money anyways. Who didn’t think of 53 when they made the app announcement? While I don’t think trademarking the name really makes sense, I think Facebook could be a lot more concise by bringing their mobile apps together and ditching the need for another app.

  • on3simpleclick

    There are hundreds of other apps in the store with the word ‘paper’ in them & at least 3 of those apps are actually called ‘paper’. There’s no way FiftyThree will win this one. The only thing Facebook is guilty of, is the lack of creativity.

  • Tony Trenkle Jr.

    Silly FiftyThree. They should know you cant beat Paper with Paper. Only Scissors beats Paper. 🙂

  • “prompting a swift response from Seattle- and New York-based FiftyThree which slammed the social networking behemoth”

    That wording seems to make it sound like FiftyThree are the bullies here when actually they were very polite and courteous in their initial reach out to Facebook. Facebook declined their request (and from Facebook’s own history with such clashes, steamrolling over smaller companies seems to be what they tend to do) which prompted FiftyThree to take such drastic measures.

    I’m not defending FiftyThree’s chosen course of action. I’m just pointing out how writers have the power to paint different shades to a story and lead readers’ minds in how they view the participants in the story.

  • Dimitris Katakis

    Apart from the “trademark”, which I actually disagree- nobody should be able to trademark such a common word-
    The actual problem is the confusion created when two apps share the same name.
    Imagine if I go create a new app named Photoshop… How would that be??

    It doesn’t matter if the second app is better or comes from a bigger developer. It’s about respect to other peoples work.

    Not to mention Apple’s mistake at allowing an app with a duplicate name at the AppStore.

  • a3yu

    Fb paper ~_~ Another stupid Facebook app
    Paper 53 *_* Awesome

  • Chuck Finley

    Inb4 the App Store gets spammed with tons of apps with “Paper” in the title.

  • s0me

    When you say “Paper” in the context of mobile devices the first thing that cames to my mind is Paper by FiftyThree. FB should change the name, this is just creating confusion.