09/21/2010 17:52 FAX 4156932222 cooLey Cooley FACSIMILE @ooo1/o00s To: Phone Number: Kimberly B. Herman, Esq. Sullivan & Worcester LLP Fax Number: (617) 338-2880 FROM: FOR COOLEY USE ONLY Gavin L. Chariston REQUESTOR NUMBER: Sender's Direct Line: (415) 693-2122 13412 Reply Fax Number: (445) 693-2222 (CLIENT MATTER: Total Pages Inciuding Cover: 4 306101-20000 DELIVERY: DATE: September 21, 2010 rl U.S. Trademark Applications for PLACEBOOK (Serial Nos. 85015017, * 85015055) COMMENTS: If you do not receive all of the pages or find that they are illegible, please call Linda M. Lewallen at (415) 693-2362. ‘CONFIDENTIALITY NOTE: hs esina and he ilomation Kenai are te be ‘gral coneancaton only os pete ry whom Hs aces you nav ecales 4 ‘is Yasin eo, pases ny us by aspen sd tun ts orga far to Ds ofc yr 101 CAUFORMIA STREET, STH FLOOR, SAN FRANCISCO, CA 94111-5800: (415) 699-2000 F: (41) 499-222 WWW.COOLEY.COM09/21/2010 17:58 FAX 4156932222 cooLey aoo02/0004 Cooley Gavin Grorton BY FAK ANG FIRST CLASS MAIL ‘gchariston@cooley.com September 21, 2010 Kimberly 8. Herman, Esq. Sullivan & Worcester LLP 1 Post Office Square, Suite 2300 Boston, Massachusetts 02109-2129 RI : U.S. Trademark Applications for PLACEBOOK (Serial Nos. 85015017, 85015041, 85015055) Dear Ms. Herman: We are legal counsel to Facebook, Inc. As you and your client are no doubt well aware, Facebook is a recognized worldwide leader in providing online communities and other products and services to help people connect and share. We understand that your client, Where, inc., recently launched a location-based product and service under the mark PLACEBOOK, and we write in that regard, Facebook owns exclusive rights to the FACEBOOK mark, including rights secured through ‘common law use and registration in the United States (U.S. Reg. Nos. 3,041,791, 3,122,052, and 3,734,637, among others) and internationally. With well over 500 million monthly active users worldwide and a preserice on nearly every major media website, the FACEBOOK mark is. indisputably famous and entitled to the broadest protection available. Indeed, Time Magazine and the San Francisco Chronicie- recently recognized Facebook as one of the web's most prominent companies. Facebook respects competing efforts to facilitate the provision of location-based information and sharing online. But with Facebook's fame comes imitation, and unfortunately an increasing number of third parties in this space are choosing their name based on the fame and success of Facebook. These parties have launched or attempted to launch websites with names that combine a generic or descriptive name for the subject matter of their site with the distinctive and arbitrary BOOK suffix of the federaily-registered FACEBOOK mark. The use of such names can lead to consumer confusion as to affiliation with or sponsorship by Facebook and can also dilute the distinctiveness of Facebook's famous FACEBOOK mark. Facebook is attentive fo the impact these third-party marks can have on the strength of its brand, and actively engages in efforts to prevent trademark infringement and dilution. ‘Consequently, Facebook vigorously protects its trademarks and diligently polices against the use and attempted federal registration of such * BOOK" names in connection with facilitating online connections, sharing information, and related services in the field. in the United States alone, Facebook has successfully intervened to prevent the registration of the marks OFFICEBOOK (website specializing in discussions about companies), FLICKBOOK (website specializing in movies and television programs), GEEZERBOOK (an online community for seniors), REDNECKBOOK (website for outdoorsmen and sportsmen), LAWYERBOOK (an 101 CAUFORNA SET, STH FLOOR, SAN FRANCISCO. CA 4111-540 I: (45) 693-2000 F (25) 699-2222 WHW.COOLEY.COM09/21/2010 17:53 FAX 4156932222 cooLey 0003/0004 Cooley hr Kimberly B. Herman, Esq. September 21, 2010 Page Two online community for lawyers), DOCTORBOOK (an online community for doctors), and VETBOOK (an online community specializing in the field of veterinary medicine). Facebook is also resolving a dispute with PublicEarth, Inc., regarding its use of the PLACEBOOK mark, which has resulted in PublicEarth’s transition to a new brand. And more recently, Facebook initiated ftigation in the Northern District of California against the operators of TEACHBOOK, an online community for teachers. Many of these infringers have expressly recognized Facebook's broad rights in the famous FACEBOOK mark and BOOK suffix. PLACEBOOK is clearly another instance of this "___BOOK" infringement and dilution of the FACEBOOK mark. Even more troubling, the PLACEBOOK mark is confusingly similar to the FACEBOOK mark in ‘overall commercial impression. PLACEBOOK sounds and looks just like the famous FACEBOOK mark. The result is a mark which capitalizes on the fame of the FACEBOOK brand and is sure to create consumer confusion in the marketplace and dilute Facebook's valuable intellectual property rights. Moreover, the location-based services offered under the PLACEBOOK mark have been available to Facebook users through third-party application developers since well before the launch of PLACEBOOK, and are also offered by Facebook directly as part of its Places feature. As a result, the goods and services offered by Where, Inc. under the PLACEBOOK mark overiap directly with or are closely related to those offered by Facebook ‘As you know, in analyzing whether confusion is likely, courts ‘will look to factors like those outlined in In re E.). Du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973). These include: (1) the strength of the mark; (2) proximity of the services; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing and/or trade channels used; (6) type of services and the degree of care likely to be exercised by the purchaser, and (7) defendant's intent in selecting the mark ‘An assessment of the relevant Du Pont factors here supports only one conclusion: that confusion between the PLACEBOOK and FACEBOOK marks is likely. The inherently distinctive FACEBOOK mark is strong and famous under Section 43(c) of the Lanham Act. AS you know, services do not need to be identical in order to establish trademark infringement. Here, there is likely a direct overlap in the goods and services provided under the FACEBOOK mark and those identified in the PLACEBOOK applications. The marks at issue are also nearly identical both visually and phonetically, differing by only two letters. ‘The PLACEBOOK mark also dilutes the FACEBOOK mark in violation of Section 43(c) of the Lanham Act, and could damage Facebook's strong and exclusive rights in its brand. The Trademark Dilution Revision Act of 2006 provides that courts look to the following, non- exclusive factors, in evaluating a dilution claim: (1) degree of similarity of the marks; (2) distinctiveness of the famous mark; (3) exclusivity of use of the famous mark; (4) degree of recognition of the famous mark; (5) whether the defendant intended to create an association with the famous mark; and (8) any actual association between the marks. 15 U.S.C. § 1125(c)(2)(B). While at this time we refrain from any comments regarding your client's intention in adopting the PLACEBOOK mark, we believe a court would find in Facebook's favor on ail essential elements of a dilution ciaim. 101 CAURORNA STREET, SIH FLOOR, SAN FRANCISCO. CA 911-580 T (415) 499-2000 F: (15) 6992822 WHIW.COOLEY.COM09/21/2010 17:54 FAX 4156932222 cooLEy oo04/0004 Cooley Kirnberly B. Herman, Esq. September 21, 2010 Page Three As you may be aware, the Ninth Circuit has held that a reasonable trier of fact could find the HOT WHEELS mark was diluted by the mark HOT RIGZ used in connection with toy vehicles. vada Toys Inc. v. Mattel inc., 85 U.S.P.Q.2d: 1895, 1899-1901 (9th Cir. 2008). Similarly, the Ninth Circuit held that the marks PERFUMEBAY and PERFUME BAY used in connection with online sales of perfume were likely to dilute the EBAY brand. Perfumebay.com inc. v. eBay Inc., 84 U.S.P.Q.2d 1865, 1876-77 (9th Cir. 2007) ("[Clonsumers may no longer associate the usage of the “Bay” suffix with eBay's unique services, specifically the sale of products on an internet-based marketplace.”). We are confident in Facebook's chances of proving a likelihood of dilution between the PLACEBOOK and FACEBOOK marks, given this precedent and the ‘current record. Of course, Facebook has no objection to your client's provision of location-based services, and welcomes innovative and creative new products in this field. Facebook is inalterably committed to protecting its trademark rights, however, which necessarily requires your client's abandonment of the PLACEBOOK mark. Facebook is willing to accommodate a reasonable phase-out of the PLACEBOOK mark and work with Where, Inc. to minimize the interruption to its business, provided that Where, Inc. immediately begins developing a pian for completing a timely transition to a new name. ‘We must accordingly receive confirmation, in writing, that Where, Inc. will (1) refrain from using the PLACEBOOK mark for any location-based goods and services (or related goods and services), (2) abandon the pending PLACEBOOK trademark applications, and (3) select a new mark to use in connection with its service offering which does not incorporate BOOK and is not otherwise confusingly similar to the famous FACEBOOK mark, ‘Where, Inc.'s cooperation with the foregoing should render further action on Facebook's part unnecessary. Be advised that the only acceptable resolution here will be one that involves ‘Where, Inc.'s transition to a new name, and Facebook will have no choice but to consider its alternative, legal remedies in the event your client’s cooperation is not immediately forthcoming. In that regard, we must receive the assurances requested above by no later than October 5, 2010. We have also requested additional time to oppose the published PLACEBOOK application. This letter is without prejudice to any and all rights of Facebook, Inc., all of which are expressly reserved. Very truly yours, cc: Anne H. Peck, Esq. 1192699 v1ISF 101 CAUFORNA RET, STH FLOOR, SAN FRANCSSCO, CA94111-500 F (415) 4782000 F [5] 6932272 WwW COOLEY.COM