## Facts

- Facebook operated the “Facebook” social networking service and alleged continuous use of the FACEBOOK mark since 2004, supported by multiple federal trademark registrations.
- Facebook alleged the FACEBOOK mark was famous due to widespread use, extensive user base, and media exposure.
- Teachbook.com LLC operated a social networking site aimed at teachers and used the mark “TEACHBOOK.”
- Teachbook applied to register TEACHBOOK, and Facebook opposed the application, alleging similarity to FACEBOOK and closely related services.
- Facebook alleged Teachbook marketed its service as a substitute or alternative to Facebook for teachers, seeking to benefit from Facebook’s reputation and goodwill.
- After an earlier suit in California was dismissed for lack of personal jurisdiction, Facebook refiled in the Northern District of Illinois, asserting federal and state trademark infringement, dilution, and related claims.
- Teachbook moved to dismiss under Rule 12(b)(6), arguing Facebook improperly sought control over the “-book” suffix and failed to plead likelihood of confusion.

## Issues

1. Whether the complaint plausibly alleged protectable trademark rights in the registered compound mark FACEBOOK, despite defendant’s argument that “book” is generic or unprotectable.
2. Whether the complaint plausibly alleged likelihood of confusion between FACEBOOK and TEACHBOOK for online social networking services.
3. Whether the complaint plausibly alleged that FACEBOOK is a famous mark and that TEACHBOOK was likely to cause dilution (including dilution by blurring), independent of consumer confusion.
4. Whether the court should consider extensive extrinsic materials submitted by the defendant at the Rule 12(b)(6) stage.

## Decision

- The court denied Teachbook’s Rule 12(b)(6) motion to dismiss in full.
- The court limited its review to the complaint and appropriate attached materials, declining to resolve disputed factual matters based on defendant’s extrinsic submissions.
- The court held Facebook plausibly alleged a valid, protectable mark, emphasizing evaluation of the FACEBOOK mark as a whole rather than isolating “-book.”
- The court held Facebook plausibly alleged likelihood of confusion, including similarity of the marks in the online marketplace, overlapping modes of use on the internet, and alleged intent to benefit from Facebook’s goodwill.
- The court held Facebook plausibly alleged fame and dilution; it recognized dilution does not require pleading likely confusion and may proceed as an alternative theory.

## Legal Principles

- On a Rule 12(b)(6) motion, the court generally evaluates the sufficiency of the complaint and properly considered exhibits, not disputed extrinsic evidence offered to contest the pleaded facts.
- A federally registered mark carries a presumption of validity at the pleading stage; challenges such as genericness typically require a developed factual record.
- Likelihood of confusion may be plausibly pleaded without allegations of actual confusion; the focus is whether confusion is reasonably probable based on pleaded facts.
- In assessing similarity, courts consider marketplace context; in online markets, textual and aural similarity may be significant due to search results, hyperlinks, and word-of-mouth referrals.
- Dilution by blurring focuses on impairment of a famous mark’s distinctiveness and does not depend on likely consumer confusion; it can provide relief even if infringement is not ultimately proven.

## Conclusion

The court allowed Facebook’s trademark infringement and dilution claims to proceed because the complaint plausibly alleged protectable rights in the registered FACEBOOK mark, a likelihood of confusion from Teachbook’s TEACHBOOK mark in the online social networking context, and potential dilution of a famous mark, while reserving fact-intensive defenses for later stages.


Facebook, Inc. v. Teachbook.com LLC, 819 F. Supp. 2d 764 (N.D. Ill. 2011)