As expected, FiftyThree has filed for a trademark on the term “Paper” following the announcement of Facebook’s magazine-style news curation tool, also named Paper.
First discovered by TechCrunch, the trademark was filed with the United States Patent and Trademark Office on January 30, when Facebook released its new app. As noted by FiftyThree co-founder Georg Petschnigg in an open letter, FiftyThree was not given advanced notice of Facebook’s plans and was taken by surprise by the app release.
According to two trademark lawyers that spoke to TechCrunch, while the trademark is newly filed, FiftyThree could have a case if it proceeds with a lawsuit as trademarks are partially use-based and it has been using the Paper app name since early 2012. Though FiftyThree previously filed for a trademark on the term “Paper by FiftyThree” it did not have a trademark for “Paper” at the time that Facebook created its app.
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.”
It is not yet known whether FiftyThree will win the trademark, as paper is a term used by many other products that predate even its own app. FiftyThree has not said whether it will pursue legal action against Facebook, but Petschnigg says the company is “keeping its options open.”
For now, FiftyThree has asked Facebook to ” to stop “using our brand name and ” build a brand name of their own”.